Metropolitan Life Insurance Company v. NewsNSearch / Paul Chew
Claim Number: FA1107001398304
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Gary Saposnik of Melbourne IT Digital Brand Services, California, USA. Respondent is NewsNSearch / Paul Chew (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metlifefinancial.com>, registered with eNom.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2011; the National Arbitration Forum received payment on July 19, 2011.
On July 13, 2011, eNom confirmed by e-mail to the National Arbitration Forum that the <metlifefinancial.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@metlifefinancial.com. Also on July 20, 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 10, 2011, 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 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 <metlifefinancial.com> domain name is confusingly similar to Complainant’s METLIFE mark.
2. Respondent does not have any rights or legitimate interests in the <metlifefinancial.com> domain name.
3. Respondent registered and used the <metlifefinancial.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Life Insurance Company, is an international provider of insurance, annuity, non-medical health and property and casualty insurance, and savings and retirement products. Complainant has also expanded its services to include financial planning, residential and commercial mortgage, lending, and real estate brokerage services. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") which identify its services, such as: METLIFE (e.g., Reg. No. 1,541,862 registered May 30, 1989); METLIFE AAA (Reg. No. 1,415,273 registered October 28, 1986); METLIFE ADVICE (Reg. No. 2,811,849 registered February 3, 2004); METLIFE BANK (Reg. No. 2,814,241 registered February 10, 2004); and METLIFE FINANCIAL SERVICES (Reg. No. 2,791,583 issued December 9, 2003).
Respondent, NewsNSearch / Paul Chew, registered the <metlifefinancial.com> domain name on September 14, 2003. Respondent’s disputed domain name previously resolved to a website that displayed third-party links to companies that offer financial and insurance services in competition with Complainant, which also identified that the domain name was for sale. Respondent’s disputed domain name currently resolves to a website located at <firstratesearch.com>, which also contains third-party links to insurance and financial service companies 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.
Under the UDRP there are two ways in which a complainant may establish rights in its mark under Policy ¶ 4(a)(i): provide evidence of a governmental trademark registration; or provide evidence of common law rights in the asserted mark. Here, Complainant has presented the Panel with numerous trademark certificates from the USPTO for marks containing its METLIFE mark. Complainant asserts that it has rights in its METLIFE mark (e.g., Reg. No. 1,541,862 registered May 30, 1989) through such registrations. The Panel agrees, and finds that Complainant has met its initial burden under Policy ¶ 4(a)(i) by establishing rights in its METLIFE mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The second element of Policy ¶ 4(a)(i) that a complainant must satisfy is to prove that the domain name at issue is confusingly similar to its mark. In undertaking its task, Complainant argues that the <metlifefinancial.com> domain name contains its mark entirely while adding the descriptive term “financial,” which relates to many of its services. Complainant contends that adding a term to its mark in the domain name that has an obvious relationship to its business does not remove the domain name from being confusingly similar. Further, Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” is not significant under Policy ¶ 4(a)(i) as it is a required element of every domain name. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s METLIFE mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights or legitimate interests in the <metlifefinancial.com> domain name. 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has satisfied its burden. Due to Respondent’s failure to submit a Response in these proceedings, that Panel further finds that it may accept as true all of Complainant’s assertions that are not clearly contradicted by the evidence presented. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Therefore, the Panel will continue to evaluate the evidence submitted by Complainant to ensure that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(i).
Complainant claims that Respondent has never been known by the disputed domain name or any combination of Complainant’s METLIFE marks. Further, Complainant asserts that it has not authorized Respondent to use any of its marks in the domain name or otherwise. Complainant points to the WHOIS information that it submitted that identifies “NewsNSearch / Paul Chew” to argue that Respondent is not commonly known as the domain name. The Panel, absent a Response by Respondent, agrees with Complainant and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s disputed domain name previously resolved to a website that displayed third-party links to companies that offer financial and insurance services in competition with Complainant. According to the screen shot evidence submitted by Complainant the links are presented under headings such as, “Annuities,” Financial Advisor,” “Financial Planning,” and “Metlife Income for Life.” The Panel finds that Respondent’s display of third-party links to Complainant’s competitors, presumably resulting in financial gain, is evidence that Respondent is not engaging in 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not 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)).
Further, Complainant asserts that Respondent’s disputed domain name currently resolves to a website located at <firstratesearch.com>, which also contains third-party links to insurance and financial service companies in competition with Complainant. Complainant’s evidence also show links to unrelated services under headings such as “Cheap Airfare” and “Cell Phones.” Again, the Panel presumes that Respondent receives commercial benefit from such use of the disputed domain name. Therefore, the Panel finds that Respondent’s current use of the disputed domain name is also 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Further Complainant’s evidence shows the following statement clearly displayed at the bottom of the previously resolving website, “This domain may be for sale. Backorder this domain.” The Panel finds that open offers to sell the domain name at issue to the general public are further evidence that Respondent lacks rights and legitimate interests in the domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant has presented evidence that Respondent previously attempted to sell the disputed domain name to Internet users that happened upon the resolving website. The Panel notes that general offers to sell a disputed domain name have been found to be evidence of bad faith under Policy ¶ 4(b)(i). See 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).”); 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). Therefore, the Panel finds that Respondent’s purported attempt to sell the disputed domain name to the general public is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(i).
Complainant also argues that Respondent has used the disputed domain name, both previously and currently, to display third-party links to competing financial and insurance service companies. The Panel assumes that such use results in the diversion of Internet users from Complainant’s services under the METLIFE mark, to those of its competitors. Therefore, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Presumably such use of the confusingly similar <metlifefinancial.com> domain name as evidenced above results in financial gain for Respondent through the receipt of click-through or affiliate fees. Complainant contends that Respondent’s attempt to profit commercially by confusing Internet users into visiting its website by using a version of the METLIFE mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See 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); 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 that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metlifefinancial.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 22, 2011
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