national arbitration forum

 

DECISION

 

MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin

Claim Number: FA0611000852581

 

PARTIES

 

Complainant is MetAmerica Mortgage Bankers (“Complainant”), represented by George J Anger, of Lightmaker Tunbridge Wells Ltd, Buildings 3&4 Century Place, Lamberts Road, Tunbridge Wells, Kent TN2 3EH United Kingdom.  Respondent is Whois ID Theft Protection c/o Domain Admin (“Respondent”), P.O. Box 116WB, West Bay, Grand Cayman GT KY.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <metamerica.com>, registered with Dotster.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 27, 2006.

 

On November 27, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <metamerica.com> domain name is registered with Dotster and that Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 December 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2006 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@metamerica.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <metamerica.com> domain name is confusingly similar to Complainant’s METAMERICA MORTGAGE BANKERS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <metamerica.com> domain name.

 

3.      Respondent registered and used the <metamerica.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, MetAmerica Mortgage Bankers, is a financial service provider that operates ten locations in the southeastern United States.  Complainant has continuously used the METAMERICA MORTGAGE BANKERS mark for over four years and is recognized by the National Association of Mortgage Bankers, Virginia Association of Mortgage Bankers, the Association of Mortgage Professionals, and the BBB Reliability Program.  Complainant’s existing website is located at the <metamerica.us> domain name.

 

Complainant has registered the METAMERICA MORTGAGE BANKERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,001,146 issued September 27, 2005, filed February 20, 2004; Reg. No. 2,938,034 issued April 5, 2005, filed February 20, 2004).

 

Respondent’s <metamerica.com> domain name, which it registered on May 8, 2004, resolves to a pay-per-click website displaying links to various websites with content unrelated to Complainant, such as cell phone, ring tone downloads, discounted products and services, and maps of America.

 

DISCUSSION

 

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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant holds two trademark registrations for the METAMERICA MORTGAGE BANKERS mark with the USPTO.  As Complainant’s rights in the mark relate back to the filing date of February 20, 2004, Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date), Complainant has sufficiently established rights in the mark that predate Respondent’s registration of the <metamerica.com> domain name on May 8, 2004.  Miller Products Co. v. Grozinger, FA 823231 (Nat. Arb. Forum Dec. 5, 2006) (“Rights in a trademark can be shown in several ways, including by way of a U.S. trademark registration.  A trademark registration constitutes prima facie evidence of its ownership and validity of the mark.”). 

 

Respondent’s <metamerica.com> domain name incorporates the predominant portion of Complainant’s METAMERICA MORTGAGE BANKERS mark and merely omits the last two terms.  In Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000), the panel found that the <asprey.com> domain name was confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks even though it only contained one word of the mark.  Similarly, the panel in WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) concluded that the <westjets.com> domain name was confusingly similar to the complainant’s mark where the complainant held rights in the WEST JET AIR CENTER mark.  In this case, Respondent has failed to sufficiently distinguish the <metamerica.com> domain name from Complainant’s registered mark by merely omitting two terms and incorporating the predominant portion of the mark.  Consequently, the Panel finds the <metamerica.com> domain name to be confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <metamerica.com> domain name.  Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). 

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <metamerica.com> domain name.  Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

None of the evidence in the record points to Respondent being commonly known by the <metamerica.com> domain name.  Hence, the Panel finds that Respondent has not established rights or legitimate interests in the <metamerica.com> domain name pursuant to Policy ¶ 4(c)(ii).  Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent’s website is simply a pay-per-click web page with links to various websites with content unrelated to Complainant.  In Elsevier B.V. v. Domain Deluxe, FA 237520 (Nat. Arb. Forum Mar. 24, 2004), the panel held that the respondent’s use of the <sciencdirect.com> domain name, which was confusingly similar to the complainant’s SCIENCE DIRECT mark, to operate a “portal website” that generated revenue through advertisements was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.  Because Respondent also presumably earns “click-through fees” from diverting Internet users seeking Complainant’s products to a search engine containing links to third-party websites, its use of the disputed domain name also does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <metamerica.com> domain name pursuant to Policy ¶ 4(c)(iii). 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s registration and use of the confusingly similar domain name to operate a pay-per-click website demonstrates bad faith pursuant to Policy ¶ 4(b)(iv), for Respondent likely profits from click-through fees for each Internet user it redirects to other websites via links on Respondent’s website.  Respondent is taking advantage of the confusing similarity between the <metamerica.com> domain name and Complainant’s METAMERICA MORTGAGE BANKERS mark in order to profit from the goodwill associated with the mark, which the Panel finds to be in bad faith under Policy ¶ 4(b)(iv).  Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <metamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  January 12, 2007

 

 

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