Metropolitan Life Insurance Company v. Interpress Inc.
Claim Number: FA1109001409082
Complainant is Metropolitan Life Insurance Company ("Complainant"), represented by Gary Saposnik of Melbourne IT Digital Brand Services, California, USA. Respondent is Interpress Inc. ("Respondent"), represented by John Hills, Hawaii, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metropolitaninsurance.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2011; the National Arbitration Forum received payment on September 26, 2011.
On September 27, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <metropolitaninsurance.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@metropolitaninsurance.com. Also on September 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
On October 9, 2011, the Forum received from Respondent a request to extend the deadline for a Response for 20 days due to extenuating circumstances. Complainant refused to consent to the extension, but on October 12, 2011 the Forum, in agreement with Respondent that extenuating circumstances existed, notified both Complainant and Respondent that the deadline for a Response would be extended until November 3, 2011.
A timely Response was received and determined to be complete on November 2, 2011.
Complainant's Additional Submission was received on November 8, 2011, which was not within five days of receipt of the Response and is deemed not to comply with Supplemental Rule 7. However, as the Additional Submission was only one day late, the Panel, within its discretion to ensure "that each Party is given a fair opportunity to present its case" per ICANN Rule 10(b), has decided to consider such Additional Submission in the ruling rendered below. See Lost Tree Village Prop. Owners Ass'n, Inc. v. Domain Name Firm; FA 1338993 (Nat. Arb. Forum Oct. 1, 2010) ("Although the respondent has been found to be deficient in terms of Supplemental Rule 7, the Panel feels that the ends of justice would be met if the delay in submission of additional submission by respondent is condoned.").
Respondent's Additional Submission was received on November 14, 2011 and is deemed compliant with Supplemental Rule 7. The Panel has decided to consider also Respondent's Additional Submission.
On November 8, 2001, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Since 1928, Complainant has operated a life insurance company in North America under the brand name, "Metropolitan." Complainant has also used the name, "Metlife," in connection with its products and services since at least 1968.
- Complainant has obtained United States Patent and Trademark Office ("USPTO") registrations for the marks METROPOLITAN and METLIFE. Complainant also owns and operates the domain name <metropolitanlife.com> in connection with its business.
- Complainant has spent hundreds of millions of dollars in advertising and promoting its METROPOLITAN and METLIFE marks. It is the largest insurer in North America in terms of "in-force" life insurance, and serves approximately 37 million customers through its insurance plans. Complainant is ranked number 46 on the Fortune 500 list, and its marks have become famous and distinctive through their significant use over time.
- In December 2010, Complainant contacted Respondent with a demand that the disputed domain name be transferred immediately to Complainant. Respondent replied by asserting that there was no trademark conflict as the name was generic and descriptive. Respondent was willing to sell the name to Complainant for USD$13,000, a sum likely far in excess of Respondent's registration fees.
- The disputed domain name, <metropolitaninsurance.com>, is confusingly similar to Complainant's METROPOLITAN mark. The addition of the term "insurance, " which is descriptive of Complainant's products and services, fails to distinguish that name from that mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has granted to Respondent no permission, authorization or license by which Respondent could claim rights or legitimate interests in that name. Moreover, Respondent is not known by said name. Finally, Respondent uses the disputed domain name to obtain click-through fees by providing links to third party websites that offer insurance services that are in competition with those offered by Complainant. Such use constitutes neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of the name.
- Respondent registered and is using the disputed domain name in bad faith. Respondent's use of the name to obtain click-through fees due to likely consumer confusion with Complainant's marks is evidence of bad faith. Respondent's offer to sell the disputed domain name for a sum far in excess of its registration costs is further evidence of bad faith. Furthermore, Respondent has engaged in a pattern of registering infringing domain names, including those incorporating such well-know marks as GOOGLE and EBAY.
B. Respondent
- Respondent has owned the disputed domain name since 1999, and the present filing represents an attempted taking of a legitimate asset that has climbed in value in the booming Internet marketplace.
- "Metropolitan Insurance" is a generic term: made up of "metropolitan," meaning "all things pertaining to a city" and "insurance," meaning "underwriting risk/protecting against loss." Thus, the meaning of "metropolitan insurance" is "insurance pertaining to a city or cities."
- The use of a generic term in a domain name does not necessarily constitute infringement of a corresponding trademark. Respondent has discontinued use of the disputed domain name as a pay-per-click interface, freeing it to be used for only informational purposes, in conjunction with a noncommercial public service website.
- The disputed domain name, <metropolitaninsurance.com>, is not confusingly similar to Complainant's METLIFE mark.
- Complainant's action against Respondent is arbitrary because Complainant has failed to take action against third parties that own such domain names as <metropolitaninsurance.org>, <metropolitaninsurance.net>, etc. Moreover, a book entitled Metropolitan Life exists, which would constitute infringement if Complainant's theories of infringement if this case were applied.
- The selling name for Complainant's products and services is either "MetLife" or "Metropolitan Life," not "metropolitan insurance."
- Generic domain names are valuable assets, and Complainant seeks to acquire the disputed domain name after Respondent has optimized the traffic generated through the name. Parking of a generic domain name is bona fide offering of goods and services, and Respondent's use of a monetizing service is a legitimate means to defray registration fees.
- Respondent is not known by the disputed domain name.
- Respondent has not attempted to mislead consumers by use of the disputed domain name, and has not tarnished Complainant's marks in any way.
- Respondent has not acted in bad faith, as parking with a monetizer company is a common practice with respect to domain names composed of generic terms. Complainant has the capacity to block any reference to its marks appearing on Respondent's website, but chooses not to because Complainant gains commercially from such references. Similarly, Complainant does not attempt to prohibit non-related insurance agents from using Complainant's marks while selling insurance policies from competing third-party insurers.
- Complainant's allegation that Respondent owns many infringing domain names is misleading because many of the names cited are not owned by Respondent. The domain names so owned by Respondent are legitimately held.
- Respondent did not register the disputed domain name with the intent to sell it to Complainant or disrupt Complainant's business. When contacted by Complainant, Respondent sought an independent appraisal of the value of the name –which came to USD$18,000 –before offering the name to Complainant for a reduced price of USD$13,000.
- Respondent has never attempted to derive commercial gain from the disputed domain name due to confusion with Complainant or its marks.
C. Complainant's Additional Submission
- Respondent's argument that Complainant is singling out Respondent for infringement action is without merit as Complainant enforces its trademark rights vigorously and has, for example, filed more than 40 UDRP claims. Moreover, that other parties may be presently infringing upon Complainant's trademark rights does not validate Respondent's infringement.
- Respondent's claim that it will alter its use of the disputed domain name comes after notification of this action, and is thus not a bona fide offering per the Policy.
- Respondent's claim that Complainant delayed in bringing the present case in an attempt to profit from Respondent's efforts in increasing the value of the disputed domain name is again without merit because any value in the name is due to confusion with Complainant's marks.
- Complainant's USPTO registrations for its METROPOLITAN and METLIFE marks serve as constructive notice to Respondent of Complainant's exclusive rights in the marks relative to the insurance industry.
- Complainant's cease and desist letter, to which Respondent replied with a USD$13,000 acquisition offer, was not Complainant's attempt to reach a negotiated price for the disputed domain name.
- Respondent's contention that Complainant's METROPOLITAN mark is generic and thus undeserving of trademark or infringement protection is erroneous as noted in prior UDRP rulings.
D. Respondent's Additional Submission
- Complainant is not harmed by its advertisements appearing on Respondent's website found at the disputed domain name. Complainant's logo was never displayed on the website, and the circumstance faced by Complainant is no different than the results from a Google search function.
- The ownership of many of the domain names wrongly attributed to Respondent by Complainant resulted from an Estonian off-shore hacking operation. Both Wikepedia and the Washington Post published reports on that operation.
- Respondent's ownership of any domain names containing the GOOGLE mark were acquiesced to by an officer at Google, but Respondent would gladly transfer rights in such domains to that company if so requested.
- The material facts in the prior UDRP cases involving and cited by Complainant are different from and not controlling in this case, largely because in most of those cases the domain name in dispute included the term "Metlife" not "metropolitan." The resulting domain names were not descriptive as in the present case.
Complainant is a well-known United States of America company that has operated in the field of insurance for many decades. It serves millions of customers and has revenues in the billions of dollars. Complainant owns many USPTO registrations for its marks, METROPOLITAN (e.g., Registration No.1,536,727; issued April 25, 1989) and METLIFE (e.g., Registration No. 1,541,862; issued May 30, 1989).
Respondent is the registered owner of the disputed domain name <metropolitaninsurance.com>, which was registered on June 25, 1999. Respondent has used the disputed domain name to host a website that provides links to third party websites which offer insurance products and services that compete with those offered by Complainant. Respondent receives click-through fees in connection with providing said links.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel has little difficulty in concluding that Complainant has the requisite rights in its METROPOLITAN mark for the purposes of Policy Paragraph 4(a)(i) due to Complainant's sustained use of the mark in commerce for decades and its registration with the USPTO. See, e.g., Metropolitan Life Ins. Co. v. Domain Admin, FA 860544 (Nat. Arb. Forum Jan. 17, 2007) ("Complainant has established rights in the METROPOLITAN mark through registration with the USPTO. "); see also Intel Corp. v. M. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) ("Complainant has established rights in the . . . marks by registering them with the United States Patent and Trademark Office . . .").
The Panel notes that the disputed domain name, <metropolitaninsurance.com>, does not exactly duplicate Complainant's METROPOLITAN mark, as there is the additional term "insurance" and the gTLD ".com". However, the Panel notes also that there is overwhelming precedence in UDRP decisions finding that such additions of generic or descriptive terms do not preclude a determination of confusing similarity when the mark is fully incorporated in the disputed domain name. In this case, the Complainant's full mark is placed first –thus dominating the name –and the following descriptive term "insurance" completely describes Complainant's business. So the Panel is compelled to conclude that the name is confusingly similar to the mark. See TPI Holdings, Inc. v. Armengol, D2009-0361 (WIPO May 19, 2009) (finding <autotradertransactions.com> to be confusingly similar to the AUTO TRADER mark, while stating that "the addition of the word 'transactions' to the Domain Name increases the confusing similarity, as Complainant's Mark is used in connection with advertising for automobile sales transactions."); see also Whitney Nat'l Bank v. Easynet Ltd., FA 944330 (Nat. Arb. Forum Apr. 30, 2007) ("The additions of generic words with an obvious relationship to Complainant's business and a gTLD renders the disputed domain name confusingly similar to Complainant's mark pursuant to Policy ¶ 4(a)(i)."); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (". . . the affixation of a gTLD to [a] domain name is irrelevant to a Policy ¶ 4(a)(i) analysis.").
In line with the foregoing, the Panel finds that Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As explained by innumerable prior Policy panels, a complainant must first put forth a prima facie case that the Respondent fails to have rights or legitimate interests in a disputed domain name. Then the burden shifts to that respondent to establish otherwise. See, e.g., AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."); see also Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). In this case, Complainant has met the minimal burden of presenting a prima facie case by demonstrating rights in an appropriate service mark and attesting to its lack of permission, authorization or license for Respondent to use a corresponding domain name.
In its defense, Respondent has made a number of contentions designed to support its rights and legitimate interests in the disputed domain name. First, Respondent claims that the name is composed of the generic terms "metropolitan" and "insurance," making the name available to anyone irrespective of any valid trademark or service mark claims. The Panel notes that prior Policy panels have recognized the right of any person to acquire and use a domain name made up of one or more generic and/or descriptive terms that also may be essentially the same as a pre-existing trademark or service mark, so long as there is an offering (even if merely third party links) that is based on the plain meaning of the term(s) and not based on trading upon the reputation of the mark. See Visual Sys., Inc. v. Dev. Servs. Telepathy, Inc., FA 1318632 (Nat. Arb. Forum June 25, 2010); see also Gibson, LLC v. Valencia, D2010-0490 (WIPO May 22, 2010) ("A trademarked descriptive term may be used for its descriptive value, but it is not legitimate to use the term 'because of its value as a trademark.'"); see also St. Andrews Links Ltd. v. Refresh Design, D2009-0601 (WIPO June 22, 2009) ("If a respondent can show that it registered and has used the domain name with a view to taking advantage of [a] generic or descriptive meaning, then it may well have a legitimate interest for the purposes of the Policy. If instead and notwithstanding a potential generic use, the intention was to take advantage of a domain name's association with the business of another, then there will not be a legitimate interest . . .").
In this case, the Panel, while acknowledging the descriptive nature of each term of which the disputed domain name is comprised, does not believe that the term "metropolitan insurance" is a descriptive term with a common meaning as are, say, the terms "life insurance", "auto insurance", "home insurance", etc. The latter terms are distinct forms of insurance that are commonly purchased. To the Panel's knowledge, no one buys or, ever refers to, "metropolitan insurance. " Yes, as Respondent contends, the term "metropolitan insurance" might be defined to mean "insurance pertaining to a city or cities." But the Panel believes that use of the latter term is not commonplace, and that the public would associate the word "insurance" with the word "metropolitan" due solely to Complainant's decades of business operations as one of the largest insurance companies in North America.
The Respondent does not deny knowledge of Complainant's marks, and certainly knew of Complainant prior to registration of the disputed domain name. Lack of knowledge of a pre-existing similar mark owned by another was a crucial factor in UDRP cases where panels found that a respondent did have a legitimate interest in a disputed domain name composed of descriptive terms that would otherwise infringe upon that mark. See, e.g., Nat'l Trust for Historic Pres. v. Preston, D2005-0424 (WIPO Aug. 10, 2005); see also Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000); see also Allocation Network GmbH v. Gregory, D2000-0016 (WIPO Mar. 24, 2000).
In view of all of the factors cited above, the Panel believes that Respondent is using the disputed domain name to unfairly trade on Complainant's METROPOITAN mark rather than to provide goods or services related to the plain meaning of the name's descriptive terms. Thus, the Panel finds that Respondent's use of the disputed domain name, which furnishes links to the websites of Complainant's competitors, is not "a bona fide offering of goods or services" per Policy paragraph 4(c)(i). See Humana Inc. v. Domain Deluxe, D2005-0231 (WIPO May 10, 2005) ("Use for a portal linking to websites of the Complainant's competitors is not a bona fide offering."); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) ("Respondent's use of a domain name confusingly similar to Complainant's . . . mark to redirect Internet users to websites offering products and services in competition with Complainant's business is not a use in connection with a bona fide offering of good or services pursuant to Policy ¶4(c)(i) . . .").
Respondent concedes that it has never been commonly known as the disputed domain name, so paragraph 4(c)(ii) is inapplicable to this case as well.
Respondent contends that it is prepared to use the disputed domain name for a website that provides noncommercial information for public benefit concerning insurance pertaining to a city or cities, in line with the descriptive meaning referred to above. However, the Panel is compelled to reject this contention, which is an attempt to comply with the requirements of paragraph 4(c)(iii), because the Panel believes that the circumstances of disputed domain name use must be evaluated as of the time that the Complaint is filed. See St. Andrews Links Ltd. v. Refresh Design, D2009-0601 (WIPO June 22, 2009) ("However, for present purposes it is sufficient to note that the question of rights and legitimate interest should be assessed at the date of the Complaint.").
Respondent argues also that Complainant has singled out Respondent unfairly for a claim of infringement, because there appear to be many third parties that are using domain names that are equally similar to Complainant's marks. Again, the Panel must reject this argument and agree with Complainant's contention that Complainant's decision, or not, to file complaints against others has no bearing whatsoever on these proceedings or whether Respondent has violated Complainant's rights.
Since the Panel has determined that all of Respondent's contentions are unpersuasive, the Panel concludes that Complainant's prima facie case prevails.
Accordingly, the Panel finds that Complainant has proved that Respondent has no rights or legitimate interests in the disputed domain name.
Policy paragraph 4(b) sets forth four circumstances that give rise to a ruling of bad faith registration and use if the Panel finds one or more of them applies. In this case, as the evidence in the record paints Respondent as a typical cyber-squatter, and the Panel believes that a number of these circumstances do apply.
However, in the service of brevity, the Panel will note simply that Respondent has used the disputed domain name to host a website that provides links to the websites of Complainant's competitors. This use employs Complainant's well-known trademark in the disputed domain name for commercial gain, in the form of click-through fees, by creating Internet user confusion through suggesting Complainant as the source, sponsor, affiliate or endorser of Respondent's website. This action constitutes bad faith registration and use of the disputed domain name per paragraph 4(b)(iv) of the Policy. See Trump v. Mediaking LLC, D2010-1404 (WIPO Oct. 16, 2010); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) ("Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent's own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).").
The Respondent claims that it does not choose which hyperlinks are found on the resolving website because the domain name is parked, but the Panel holds that Respondent is ultimately responsible for all content on that website. See Vance Int'l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) ("Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent."); see also Gold Medal Travel Group. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (finding that where the disputed domain name had been parked, the panel found that "the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.").
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metropolitaninsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: November 22, 2011
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