Metropolitan Life Insurance Company v. Domain Admin
Claim Number: FA0612000860544
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Heidi
C. Constantine, of Metropolitan Life Insurance Company, 1
MetLife Plaza, 27-01 Queens Plaza North, Long Island City, NY 11101. Respondent is Domain Admin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <metropolitanlifeinsurance.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 6, 2006.
On December 6, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <metropolitanlifeinsurance.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 December 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 27, 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@metropolitanlifeinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <metropolitanlifeinsurance.com> domain name is confusingly similar to Complainant’s METROPOLITAN mark.
2. Respondent does not have any rights or legitimate interests in the <metropolitanlifeinsurance.com> domain name.
3. Respondent registered and used the <metropolitanlifeinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Life Insurance Company, is a leader in the insurance, annuities, pension fund, residential and commercial mortgage, lending, real estate brokerage and management services. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the METROPOLITAN mark (Reg. No. 1,536,727 issued April 25, 1989) in connection with individual and group life and health insurance.
Respondent registered the <metropolitanlifeinsurance.com> domain name on September 12, 2003. Respondent is using the disputed domain name to redirect Internet users to the <insurecom.com> domain name, which features links to insurance services that compete with Complainant.
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. See 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.
Complainant has established rights in the METROPOLITAN mark
through registration of the mark with the USPTO. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent’s <metropolitanlifeinsurance.com> domain name is confusingly similar to Complainant’s METROPOLITAN mark because Respondent’s domain name incorporates Complainant’s mark in its entirety and adds the terms “life” and “insurance,” and the generic top-level domain “.com.” The Panel finds that such minor additions to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name. Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii) the burden is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent is using the disputed domain name to redirect
Internet users to the <insurecom.com> domain name,
which features links to insurance services that compete with Complainant. Respondent’s use of a domain name that is confusingly
similar to Complainant’s METROPOLITAN mark to redirect Internet users
interested in Complainant’s services to a website that offers services in
competition with Complainant is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use of the domain name pursuant to Policy
¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain
names for a bona fide offering of goods or services nor a legitimate
noncommercial or fair use because the respondent used the names to divert
Internet users to a website that offered services that competed with those
offered by the complainant under its marks); see also Glaxo Group Ltd. v.
WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
Moreover, Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <metropolitanlifeinsurance.com> domain name nor authorized to use a domain name featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith in registering and using a domain name that contained in its entirety Complainant’s protected mark. Respondent is using the <metropolitanlifeinsurance.com> domain name to redirect Internet users to the <insurecom.com> domain name that features links to insurance services that compete with Complainant. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Based on the uncontested evidence presented by Complainant, the Panel infers that Respondent receives click-through fees for diverting Internet users to a website offering competing insurance services. Respondent’s domain name incorporating Complainant’s entire mark may create confusion as to Complainant’s affiliation with or sponsorship of the disputed domain name and resulting website. Thus, Respondent’s use of the <metropolitanlifeinsurance.com> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant satisfied 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 <metropolitanlifeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 17, 2007
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