national arbitration forum

 

DECISION

 

American Life Insurance Company v. MIC / Management, Domain

Claim Number: FA1010001353424

 

PARTIES

Complainant is American Life Insurance Company (“Complainant”), represented by Nimita L. Parekh, Illinois, USA.  Respondent is MIC / Management, Domain (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <metlifealico.com>, registered with Netfirms, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2010.

 

On October 20, 2010, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <metlifealico.com> domain name is registered with Netfirms, Inc.  and that Respondent is the current registrant of the name.  Netfirms, Inc. has verified that Respondent is bound by the Netfirms, 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 October 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 2010 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@metlifealico.com by e-mail.  Also on October 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

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

 

On November 22, 2010, 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" through submission of a Written Notice, as defined in Rule 1.  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 <metlifealico.com> domain name is confusingly similar to Complainant’s ALICO mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, American Life Insurance Company, owns the exclusive rights to its ALICO mark which it uses in connection with its insurance and financial services.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ALICO mark (e.g., Reg. No. 1,046,125 issued August 10, 1976).

 

Respondent, MIC / Management, Domain, registered the <metlifealico.com> domain name on January 19, 2010.  The disputed domain name resolves to a parked website which displays links for discount textbooks.  The resolving website also features an advertisement for sale of the disputed domain name.

 

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.  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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established rights in the ALICO mark.  The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).  Complainant holds multiple trademark registrations with the USPTO for its ALICO mark (e.g., Reg. No. 1,046,125 issued August 10, 1976).  Therefore, the Panel finds that Complainant has established rights in the ALICO mark pursuant to Policy        ¶ 4(a)(i).

 

Complainant asserts that Respondent’s <metlifealico.com> domain name is confusingly similar to Complainant’s ALICO mark.  The disputed domain name contains Complainant’s entire ALICO mark, adds another mark: “metlife” and adds the generic top-level domain (“gTLD”) “.com.”  Previous panels have found that the addition of another famous mark and a gTLD are insufficient to distinguish a disputed domain name from a complainant’s mark. See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  Therefore, the Panel concludes that Respondent’s <metlifealico.com> domain name is confusingly similar to Complainant’s ALICO mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the  <metlifealico.com> domain name.  Previous panels have found that when a complainant makes a prima facie in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant has made a prima facie case.  Due to Respondent’s failure to respond to the complaint, the Panel may infer that Respondent does not have rights or legitimate interests in the <metlifealico.com> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant asserts that Respondent is not a licensee of Complainant and is not authorized to use Complainant’s ALICO mark.  The WHOIS information for the disputed domain name lists the registrant as “MIC.”  As the WHOIS information fails to reflect any association between the disputed domain name and Respondent, the Panel finds that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See 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); see also Coppertown Drive-Thru Sys., 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 respondent was commonly known by the disputed domain name).

 

Complainant contends that Respondent’s <metlifealico.com> domain name resolves to a website only displaying pay-per-click links to third-party websites unrelated to Complainant.  The Panel finds that Respondent’s use of the disputed domain name in this manner does not constitute a bona fide offering of goods or services or a legitimate noncommerical or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).  See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 pursuant to Policy ¶ 4(c)(iii)).

 

Respondent’s resolving website also displays a message indicating that the disputed domain name is for sale.  The Panel finds that such willingness to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s website resolving from the <metlifealico.com> domain name displays a message that “The domain metlifealico.com may be for sale by its owner!”  Complainant also alleges that Respondent offered to sell the disputed domain name for $850, an amount well in excess of typical registration costs. The Panel finds that this constitutes an offer to sell the disputed domain name, which indicates bad faith registration and use according to Policy ¶ 4(b)(i).  See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).

 

Complainant asserts that Respondent registered the <metlifealico.com> domain name because of the fame of Complainant’s ALICO mark, intending to use Complainant’s mark to attract Internet users to Respondent’s websites.  Complainant alleges that Respondent intended to commercially profit by creating a likelihood of confusion with Complainant as to the source or affiliation of Respondent’s website.  Higher traffic to Respondent’s website likely corresponds with greater revenue from the pay-per-click links displayed on Respondent’s resolving website.  The Panel therefore finds that Respondent’s efforts to profit with pay-per-click links as a result of using Complainant’s mark to attract and confuse Complainant’s customers indicates bad faith registration and use according to Policy ¶ 4(b)(iv).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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 Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

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 <metlifealico.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  November 27, 2010

 

 

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