American Life Insurance Company v. Ye Li c/o Dynadot Privacy
Claim Number: FA1010001354354
Complainant is American Life Insurance Company (“Complainant”), represented by Nimita L. Parekh, Illinois, USA. Respondent is Ye Li c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metlife-alico.com>, registered with DYNADOT, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2010; the National Arbitration Forum received payment on October 25, 2010.
On October 26, 2010, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <metlife-alico.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 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@metlife-alico.com. Also on October 27, 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 John J. Upchurch as 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <metlife-alico.com> domain name is confusingly similar to Complainant’s ALICO mark.
2. Respondent does not have any rights or legitimate interests in the <metlife-alico.com> domain name.
3. Respondent registered and used the <metlife-alico.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Life Insurance Company, operates an insurance and financial institution. Complainant registered its ALICO trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,175,113 issued October 27, 1981).
Respondent, Ye Li, registered the disputed domain name on March 2, 2010. The disputed domain name resolves to a website featuring links to third-party insurance companies 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 alleges it has established rights in the ALICO mark. Previous panels have concluded that registration with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)). Complainant contends, and the Panel agrees, that Policy ¶ 4(a)(i) is satisfied based on the registration of its ALICO mark with the USPTO (e.g., Reg. No. 3,131,950 issued August 22, 2006).
Complainant alleges that Respondent’s <metlife-alico.com> domain name is confusingly similar to Complainant’s ALICO mark. The disputed domain name utilizes Complainant’s ALICO mark while adding the generic term “metlife” combined with the “hyphen” punctuation symbol to the beginning of Complainant’s mark. Complainant alleges that these additions still render the domain name confusingly similar to its established ALICO mark. Finally, Complainant contends that adding the generic top-level domain (“gTLD”) “.com” to the disputed domain name does not result in a distinct domain name that falls outside the realm of a confusingly similar determination. Previous panels have found that the addition of a gTLD does not distinguish a domain name from a registered mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s ALICO mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends Respondent lacks rights and legitimate interests in its <metlife-alico.com> domain name. Previous panels have found that a complainant making a prima facie showing in support of its allegations, shifts the burden to the respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the <metlife-alico.com> domain name. However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant alleges Respondent is not commonly known by the registered domain name. Respondent has not alleged any evidence, nor can the Panel find any evidence in the record, that shows Respondent is known by the disputed domain name. The WHOIS information identifies the registrant of the <metlife-alico.com> domain name as “Ye Li,” which is not similar to the disputed domain name. Furthermore, Complainant alleges it has not authorized or licensed Respondent to use its ALICO mark. Based on these findings, the Panel concludes Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
The disputed <metlife-alico.com> domain name resolves to a website that Respondent uses to post links to the websites of Complainant’s competitors in the insurance industry. Complainant alleges that Respondent financially benefits from click-through fees associated with the disputed domain name and resolving website. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to Complainant’s competitors 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 name under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
Complainant alleges, pursuant to Policy ¶ 4(a)(ii), that Respondent’s offer to sell the <metlife-alico.com> domain name is further evidence of a lack of rights and legitimate interests in the domain name. Respondent posted on the domain name and resolving website that the domain name was for sale. Complainant properly contends that previous panels have concluded that offering to sell a disputed domain name for more that the cost of the domain name is clear evidence of a lack of rights or legitimate interests in the domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also 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)). Therefore, the Panel finds that Respondent’s offer to sell the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s offer to sell the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i). Complainant contends that Respondent posted on the domain name and resolving website that the domain name was for sale. Previous panels have concluded that offering to sell a disputed domain name is sufficient proof of bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Thus, the Panel finds Respondent’s offer to sell the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Respondent’s <metlife-alico.com> domain name resolves to a website featuring hyperlinks, the majority of which resolve to Complainant’s competitors in the insurance industry. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Internet users intending to find and utilize Complainant’s services may purchase the same services from competitors as a result of Respondent’s use of the disputed <metlife-alico.com> domain name. The Panel finds that Respondent’s use of the <metlife-alico.com> domain name does disrupt Complainant’s insurance business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel believes that Respondent receives click-through fees from the hyperlinks to the third-party insurance companies posted on the domain name and resolving website. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of a confusingly similar disputed domain name. Internet users may then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name’s resolving website and featured hyperlinks. Complainant alleges that Respondent benefits from the click-through that are a result of this confusion. Complainant also contends that Respondent registered the domain name around the time of Complainant’s announcement of its merger with MetLife, Inc. Complainant provides this information as further evidence of Respondent’s bad faith registration and use of the disputed domain name. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also 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).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metlife-alico.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 2, 2010
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