Metropolitan Life Insurance Company v. Ruo Chang
Claim Number: FA1106001396047
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Gary Saposnik of Melbourne IT Digital Brand Services, California, USA. Respondent is Ruo Chang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metlifejapan.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com.
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.
Bruce E. Meyerson 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 <metlifejapan.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 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@metlifejapan.com. Also on July 6, 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 July 27, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <metlifejapan.com> domain name is confusingly similar to Complainant’s METLIFE mark.
2. Respondent does not have any rights or legitimate interests in the <metlifejapan.com> domain name.
3. Respondent registered and used the <metlifejapan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Life Insurance Company, provides insurance, annuities, pension fund, and other insurance and retirement related services for individuals and businesses. Complainant owns the METLIFE mark and has used the mark since 1968 in connection with its range of goods and services. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its METLIFE mark (Reg. No. 1,541,862 registered May 30, 1989) and in China with the State Intellectual Property Office (“SIPO”) (Reg. No. 7,715,86 registered November 14, 1994).
Respondent, Ruo Chang, registered the <metlifejapan.com> domain name on March 11, 2010. The disputed domain name resolves to a website providing third-party links to websites offering insurance services directly competing with Complainant’s business.
Respondent has been subject to at least two prior UDRP proceedings which resulted in transfer of the disputed domain names from Respondent to the respective complainants. E.g., Burberry Ltd. v. Ruo Chang, D2010-1304 (WIPO September 27, 2010); Revlon Consumer Prods. Corp. v. Ruo Chang / Cao Nimade, D2010-1333 (WIPO October 4, 2010).
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 demonstrated its rights in the METLIFE mark. A complainant may prove its rights in a mark by registering the mark with a federal trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Here, Complainant holds trademark registrations for its METLIFE mark with the USPTO (Reg. No. 1,541,862 registered May 30, 1989) and in China with SIPO (Reg. No. 7,715,86 registered November 14, 1994). The Panel concludes that Complainant has proven its rights in the METLIFE mark, under Policy ¶ 4(a)(i), by its registration with federal trademark authorities around the world.
Complainant also claims that Respondent’s <metlifejapan.com> domain name is confusingly similar to Complainant’s METLIFE mark. The disputed domain name incorporates the entire METLIFE mark and changes it only by adding the geographic term “japan” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a geographic term does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Also, the Panel finds that a gTLD does not factor into a Policy ¶ 4(a)(i) reasoning. See 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). The Panel concludes that the <metlifejapan.com> domain name is confusingly similar to Complainant’s METLIFE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel stated, “Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.” Here, Complainant has made a prima facie case in support of its claims against Respondent, thereby shifting the burden. Due to Respondent’s failure to submit a response to the Complaint rebutting the claims made by Complainant, the Panel may assume that Respondent has no rights or legitimate interests. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <metlifejapan.com> domain name. The WHOIS information identifies Respondent as “Ruo Chang,” which is not similar to the disputed domain name. Complainant also alleges that there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authority for Respondent to use the METLIFE mark in the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) as the evidence presented does not indicate otherwise. 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 of that it is commonly known by the disputed domain name).
Respondent’s <metlifejapan.com> domain name redirects Internet users to a directory website which features links to websites which offer services directly competing with Complainant’s insurance business. The resolving website likely provides Respondent with revenue from click-through fees. The Panel concludes that Respondent’s use of the confusingly similar disputed domain name to host a website directing Internet traffic to Complainant’s competitors is not 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 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)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was 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 pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant claims that Respondent is offering to sell the disputed domain name to the general public as the resolving website states that the domain name is for sale. Additionally, Complainant claims that Respondent offered to sell the <metlifejapan.com> domain name directly to Complainant for $1,000 via an email correspondence. The Panel finds that Respondent’s general offer to sell the disputed domain name and subsequent offer to sell the domain name to Complainant in excess of out-of-pocket costs of registration is further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website which states that the domain name is for sale. Complainant also received an e-mail offer from Respondent to sell the disputed domain name for $1,000. The Panel finds that Complainant’s apparent willingness to dispose of the <metlifejapan.com> domain name indicates bad faith registration and use under Policy ¶ 4(b)(i). See America 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); 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).”).
Respondent has been a party in at least two prior UDRP proceedings which resulted in transfer of the disputed domain names to the respective complainants in those cases. E.g., Burberry Ltd. v. Ruo Chang, D2010-1304 (WIPO September 27, 2010); Revlon Consumer Prods. Corp. v. Ruo Chang / Cao Nimade, D2010-1333 (WIPO October 4, 2010). The Panel finds that the prior findings of bad faith against Respondent indicate a pattern of bad faith use and registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Complainant contends that Respondent registered and is using the disputed domain name in order to disrupt its business. Complainant’s potential customers may find Respondent’s website and purchase similar insurance services from one of the competing third-party links as a result. The Panel finds that the <metlifejapan.com> domain name does disrupt Complainant’s business and constitutes bad faith 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 infers that Respondent is collecting click-through fees from the aforementioned third-party links. Complainant claims that Respondent’s disputed domain name deceives Internet users as to Complainant’s sponsorship of, or affiliation with, the resolving website and featured links by using the confusingly similar domain name. Respondent tries to profit from this confusion through the receipt of click-through fees. The Panel concludes that Respondent registered and is using the <metlifejapan.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Texas Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that 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 <metlifejapan.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 3, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page