Metropolitan Life Insurance Company v.
SOLIT
Claim
Number: FA0412000390832
Complainant is Metropolitan Life Insurance Company (“Complainant”),
represented by Leon Medzhibovsky of Fulbright & Jaworski,
666 Fifth Avenue, New York, NY, 10103.
Respondent is SOLIT (“Respondent”),
1, Sejongno, Jongno-gu, Seoul 110050, KR.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mymetlife.com>, registered with Wooho
T&C Co., Ltd. d/b/a Rgnames.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically December
22, 2004; the National Arbitration Forum received a hard copy of the Complaint December
23, 2004.
On
January 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 26, 2005, 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@mymetlife.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
February 1, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <mymetlife.com>, is confusingly similar to
Complainant’s METLIFE mark.
2. Respondent has no rights to or legitimate
interests in the <mymetlife.com> domain name.
3. Respondent registered and used the <mymetlife.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Metropolitan Life Insurance Company, has been providing insurance and related
services for over 135 years.
Complainant is the largest life insurer in terms of life insurance
“in-force” in North America and offers financial products and services to 88 of
the Fortune 100 companies. Complainant
serves approximately 13 million households in the United States and provides
benefits to approximately 37 million employees and family members through their
plan sponsors. Complainant also has
major operations, affiliates and representative offices throughout the
Americas, Europe and Asia, including direct international insurance operations
in ten countries serving approximately eight million customers.
Complainant
registered the METLIFE mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,541,862 issued May 30, 1989). This mark has become incontestable. Complainant also registered the METLIFE mark in many countries
throughout the world, including South Korea (Reg. No. 007691 issued November
27, 1987), Respondent’s home country.
Respondent
registered the <mymetlife.com> domain name March 2, 2004. Respondent’s domain name does not resolve to
an active website.
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 will draw such
inferences as the Panel considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 to 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
established using extrinsic proof in this proceeding that it has rights in the
METLIFE mark through registration with the USPTO and by continuous use of the
mark in commerce. 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 Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The domain name that Respondent registered, <mymetlife.com>,
is confusingly similar to Complainant’s METLIFE mark because the domain name
incorporates Complainant’s mark in its entirety and merely adds the term “my”
and the generic top-level domain “.com.”
Such minor changes are not enough to negate a finding of confusing
similarity pursuant to Policy ¶ 4(a)(i).
See Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding
that the <myinfospace.com> domain name is confusingly similar to
Complainant’s INFOSPACE mark); see also NIIT Ltd. v. Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (“[The]
domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part
thereof, is confusingly similar to the Complainant’s trade name and trademark
NIIT.”); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions brought forth by Complainant as true and accurate. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Respondent’s
failure to respond also may be considered evidence that Respondent lacks rights
and legitimate interests in the <mymetlife.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent failed to invoke any circumstance that could demonstrate any rights
or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Furthermore, no evidence in the record suggests that Respondent is
commonly known by the <mymetlife.com> domain name or that
Respondent is authorized to register or use domain names that incorporate
Complainant’s METLIFE mark. Therefore,
the Panel concludes that Respondent lacks rights and legitimate interests in
the domain name pursuant to Policy ¶ 4(c)(ii).
See Ian Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding
that without demonstrable evidence to support the notion that a respondent is
commonly known by a domain name, the notion must be rejected); see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Respondent has
not used the <mymetlife.com> domain name, as such, and Respondent
therefore cannot be said to be making a bona fide offering of goods or services
and cannot be said to be making a legitimate noncommercial or fair use of the
domain name. In these circumstances,
Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(“[M]erely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”)
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith in registering and passively holding
a domain name that contains in its entirety Complainant’s protected mark. No evidence in the record suggests that
Respondent has used the disputed domain name since registering it almost eleven
months ago. Thus, the Panel concludes
that Respondent has passively held the domain name, which constitutes bad faith
use and registration under Policy ¶ 4(a)(iii).
See Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(a)(iii) even though Respondent has not used the domain name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will create the confusion described in the Policy”);
see also Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that
merely holding an infringing domain name without active use can constitute use
in bad faith).
Furthermore,
Respondent’s registration of the <mymetlife.com> domain name,
which incorporates Complainant’s well-known METLIFE mark, suggests that
Respondent knew of Complainant’s rights in the METLIFE mark. Additionally, Complainant’s numerous
trademark registrations throughout the world for the METLIFE mark, including in
Respondent’s country of residence, put Respondent on constructive notice of
Complainant’s mark. Therefore, the
Panel finds that Respondent chose the <mymetlife.com> domain name
based on the distinctive and well-known qualities of Complainant’s mark, which
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”)
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <mymetlife.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 15, 2005
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