Metropolitan Life Insurance Company v.
Ling Shun Shing
Claim
Number: FA0411000370667
Complainant is Metropolitan Life Insurance Company (“Complainant”),
represented by Leon Medzhibovsky, of Fulbright & Jaworski,
666 Fifth Avenue, New York, NY 10103.
Respondent is Ling Shun Shing (“Respondent”),
138 Yi Xue Yuan Rd., Shanghai, NA, China 200032.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <metlifeinvesters.com> and <metlife401k.com>,
registered with Moniker Online Services, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
November 22, 2004; the National Arbitration Forum received a hard copy of the
Complaint on November 23, 2004.
On
November 27, 2004, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain names <metlifeinvesters.com>
and <metlife401k.com> are registered with Moniker Online Services,
Inc. and that Respondent is the current registrant of the names. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online
Services, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's Uniform
Domain Name Dispute Resolution Policy (the "Policy").
On
November 29, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 20, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@metlifeinvesters.com and
postmaster@metlife401k.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
December 27, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <metlifeinvesters.com>
and <metlife401k.com> domain names are confusingly similar to
Complainant’s METLIFE mark.
2. Respondent does not have any rights or
legitimate interests in the <metlifeinvesters.com> and <metlife401k.com>
domain names.
3. Respondent registered and used the <metlifeinvesters.com>
and <metlife401k.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Metropolitan Life Insurance Company, began providing insurance services as
early as 1863. Complainant began using
the METLIFE mark over thirty years ago for insurance and other financial
products and services. Complainant
registered the METLIFE mark with the U.S. Patent and Trademark Office (“USPTO”)
on May 30, 1989 (Reg. No. 1,541,862).
Complainant also holds various USPTO registrations encompassing the
METLIFE mark, as well as various registrations with other countries. In addition, Complainant also holds the
registration for the <metlife.com> and <metlifeinvestors.com>
domain names.
Respondent
registered the <metlifeinvesters.com> domain name on September 12,
2004, and it registered the <metlife401k.com> domain name on
October 25, 2004. Respondent is using
the disputed domain names to offer directory services that provide links to
third-party financial and insurance services.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
adequate rights in the METLIFE mark to bring a claim under the Policy as
evidenced by its trademark registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive, and
Respondent has the burden of refuting this assumption).
The Panel finds
that Respondent’s <metlifeinvesters.com> and <metlife401k.com>
domain names are confusingly similar to Complainant’s METLIFE mark because
the only difference is the addition of the misspelled word “investers” and term
“401k,” which do not significantly distinguish the domain names from the
mark. See Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see also Marriott Int’l, Inc. v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark); see also Christie’s Inc. v.
Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding
that the domain name
<christiesauction.com> is confusingly similar to Complainant's
mark since it merely adds the word "auction" used in its generic
sense).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not filed a Response. In the absence of
a Response, the Panel may accept all reasonable allegations in the Complaint as
true. See Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of the Complaint to be deemed true); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a Response the Panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
The disputed
domain names resolve to a directory website that provides links to financial
and insurance services. The Panel
accepts Complainant’s allegation that Respondent receives click-through-fees
through use of the domain names.
Therefore, the Panel finds that appropriating Complainant’s mark to
advertise third-parties’ competing goods and services for pecuniary benefit is
not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain names pursuant to Policy ¶
4(c)(iii). See Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that
Respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with Complainant, was not a bona
fide offering of goods or services); see also Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods or
services).
There is nothing
in the record, including the domain names’ WHOIS registration information,
which indicates that Respondent is commonly known by the disputed domain
names. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
appropriating Complainant’s METLIFE mark in the disputed domain names to offer
directory services that link to other’s goods and services for financial
gain. The Panel finds that this
constitutes bad faith registration and use, pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain); see also
Am. Online, Inc. v. Tencent Comm.
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where
Respondent registered and used an infringing domain name to attract users to a
website sponsored by Respondent).
The links at the
disputed domain names advertise financial and insurance services in competition
with Complainant’s services. The Panel
finds that appropriating Complainant’s mark to offer links to Complainant’s
competitors is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <metlifeinvesters.com> and <metlife401k.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
January 4, 2005
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