Metropolitan Life Insurance Company v. Rocco Mancini
Claim Number: FA1106001395995
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Gary Saposnik of Melbourne IT Digital Brand Services, California, USA. Respondent is Rocco Mancini (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metlife.biz>, registered with NETWORK SOLUTIONS INC.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2011; the National Arbitration Forum received payment on July 6, 2011.
On June 28, 2011, NETWORK SOLUTIONS INC. confirmed by e-mail to the National Arbitration Forum that the <metlife.biz> domain name is registered with NETWORK SOLUTIONS INC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS INC. has verified that Respondent is bound by the NETWORK SOLUTIONS INC. 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 July 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2011 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.biz. Also on July 7, 2011, 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 August 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <metlife.biz> domain name is identical to Complainant’s METLIFE mark.
2. Respondent does not have any rights or legitimate interests in the <metlife.biz> domain name.
3. Respondent registered and used the <metlife.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Life Insurance Company, owns the METLIFE mark. The mark is used in connection with Complainant’s insurance, mortgage management, and other financial services. The METLIFE mark has multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,541,862 registered May 30, 1989).
Respondent, Rocco Mancini, registered the <metlife.biz> domain name on March 27, 2002. The disputed domain name resolves to a website which displays links to third-party websites that offer for sale competing insurance services.
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 contends that it has established rights in the METLIFE mark through its registration of its mark with the USPTO. According to past panels in cases like Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) and Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007), the registration of a mark with a federal trademark authority such as the USPTO is a sufficient basis for a complainant to defend its rights in a mark. Complainant has provided the Panel with evidence of its registration of the METLIFE mark (e.g., Reg. No. 1,541,862 registered May 30, 1989). Thus, the Panel finds that Complainant has rights in its METLIFE mark pursuant to Policy ¶ 4(a)(i).
A respondent may not register a domain name which is identical to a complainant’s mark. The full incorporation of a mark in a disputed domain name with the simple addition of a generic top-level domain (“gTLD”) renders the domain name identical to the mark. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Complainant’s METLIFE mark followed by the gTLD “.biz” makes up the entire disputed domain name. Thus, the Panel finds that the <metlife.biz> domain name is identical to Complainant’s METLIFE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent does not have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this assertion. Given that Complainant has done so, the burden shifts to Respondent to contradict these claims, but Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not contradict them. 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel will review the record for information suggesting that Respondent does have rights or legitimate interests in the <metlife.biz> domain name.
One way in which a respondent may establish rights in a disputed domain name is if the respondent is commonly known by that domain name. Panels look to all information presented by a complainant, as well as the WHOIS information, to make this determination. See 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 the respondent was commonly known by the disputed domain name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). Complainant contends that no relationship exists between itself and Respondent. Therefore, nothing gives Respondent license to use the METLIFE mark in any capacity. The WHOIS information for the <metlife.biz> domain name lists “Rocco Mancini” as the domain name registrant. The information available to the Panel does not suggest that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is therefore not commonly known by the <metlife.biz> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <metlife.biz> domain name resolves to a website which displays links to websites competing with Complainant’s insurance services. Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant claims that Respondent offered to sell the <metlife.biz> domain name to Complainant for a fee of $500. The offer to sell a disputed domain name, particularly to Complainant, demonstrates bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Respondent claimed in its offer for sale that it won the <metlife.biz> domain name. Therefore, the $500 offer for sale appears to be an amount in excess of Respondent’s out-of-pocket expenses associated with the disputed domain name. The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant for an amount exceeding its out-of-pocket costs demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(i).
Respondent may not register and use domain names which disrupt the business of a complainant. Domain names which resolve to websites displaying third-party links to related services have been found to be disruptive. 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 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)(iii) 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). The <metlife.biz> domain name resolves to a website displaying links to websites which offer services in the insurance industry that Complainant also offers. The Panel finds that Respondent’s registration and use of the disputed domain name is disruptive of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant contends that the registration and use of the disputed domain name demonstrates bad faith as a result of Respondent’s actions being catalyzed by the attraction for commercial gain. Cases such as Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) demonstrate that the registration and use of a disputed domain name to display links to third-party websites which offer competing services demonstrates this bad faith. Respondent, having registered an identical domain name, understands that Internet users will ultimately be diverted from Complainant’s site to its own site. Thus, Internet users will be confused as to the affiliation of Respondent and Complainant. Therefore, some Internet users will likely click through these links based on the good-will established in the METLIFE mark. Respondent, presumably receiving compensation for the Internet users that use these links, will then profit. The Panel thus finds that the registration and use of the <metlife.biz> domain name was done in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent had actual knowledge of its METLIFE mark. Panels have found that where a respondent has actual knowledge of a mark and registers and uses an infringing domain name that respondent acted in bad faith. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that “[i]n light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time [Respondent] registered the disputed domain name” and such knowledge constituted bad faith). Upon receipt of a cease and desist letter from Complainant, Respondent sent a reply which included the admission that Respondent was a shareholder of Complainant’s business. The Panel finds that this admission is sufficient to find that Respondent had actual knowledge of Complainant’s METLIFE mark. Therefore, the Panel finds this to be additional evidence of bad faith registration and use of the <metlife.biz> domain name under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is met.
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.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 1, 2011
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