Metropolitan Life Insurance Company v. Dux Mundi
Claim Number: FA1106001396043
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Melbourne IT Digital Brand Services, California, USA. Respondent is Dux Mundi (“Respondent”), Azerbaijan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metlifeloans.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Sandra J. Franklin 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 29, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <metlifeloans.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@metlifeloans.com. Also on July 8, 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 Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <metlifeloans.com> domain name is confusingly similar to Complainant’s METLIFE mark.
2. Respondent does not have any rights or legitimate interests in the <metlifeloans.com> domain name.
3. Respondent registered and used the <metlifeloans.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Life Insurance Company, offers insurance, annuities, pension, savings and retirement products and services for individuals, small businesses and large institutions. Complainant has registered a trademark for the METLIFE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,541,862 registered May 30, 1989).
Respondent, Dux Mundi, registered the <metlifeloans.com> domain name on June 29, 2009. The disputed domain name resolves to a website providing pay-per-click links to third-party websites that offer insurance services in competition 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.
The Panel finds that a USPTO trademark registration with the USPTO conclusively proves Complainant’s rights in the METLIFE mark, despite the fact that Respondent lives or operates in a foreign country. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <metlifeloans.com> domain name consists of Complainant’s mark combined with the descriptive term “loans” and the generic top-level domain (“gTLD”) “.com.” In previous cases, such as Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002), and Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), the panel has found that an added term, especially when it describes Complainant’s business, is not a distinguishing feature under Policy ¶ 4(a)(i). Here, the addition of the term “loans” does not dispel, and actually increases, confusion. The Panel also finds that the added gTLD is inconsequential under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel therefore finds that Respondent’s <metlifeloans.com> domain name is confusingly similar to Complainant’s METLIFE mark pursuant to Policy ¶ 4(a)(i).
The Panel deems Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
According to Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case against Respondent in these proceedings. After a prima facie case has been established, Respondent bears the burden of proving its rights and legitimate interests in the disputed domain name. Here, Complainant presented a prima facie in these proceedings; however, Respondent failed to respond. Respondent’s silence allows the Panel to infer that Complainant’s allegations are true and that Respondent accordingly lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.); 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). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent possesses any rights and legitimate interests in the disputed domain name.
Complainant states that there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization for Respondent to use Complainant’s METLIFE mark. The WHOIS information for the <metlifeloans.com> domain name also fails to indicate any relationship between Respondent and the disputed domain name as it identifies the registrant as “Dux Mundi.” Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests 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 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 that it is commonly known by the disputed domain name).
Complainant contends that Respondent’s <metlifeloans.com> domain name resolves to a website providing various pay-per-click links to third-party websites that offer insurance services in competition with Complainant. In Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), and Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), prior panels found that the complainants’ use of the disputed domain name to post pay-per-click links to redirect Internet users to other third-parties and competitors did not qualify as a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Similarly here, the Panel holds that Respondent has not shown rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel deems Policy ¶ 4(a)(ii) has been satisfied.
Respondent makes a diversionary use of the <metlifeloans.com> domain name by redirecting Internet users seeking Complainant to competitors’ sites via advertised pay-per-click links. As the links relate to the same business offerings provided by Complainant, the Panel finds that such competition disrupts Complainant’s business and therefore shows bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the METLIFE mark in the <metlifeloans.com> domain name in an effort to trade off Complainant’s goodwill and attract Internet users to Respondent’s pay-per-click directory. As the pay-per-click links displayed relate to Complainant’s products and services, their presence along with Complainant’s mark in the disputed domain name creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s resolving website. It is presumed that Respondent uses the disputed domain name to profit from the pay-per-click revenue generated. Therefore, the Panel concludes that Respondent’s use of the disputed domain name exhibits bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also 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).
The Panel deems Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metlifeloans.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 8, 2011
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