Metropolitan Life Insurance Company v. ABC, Attn METLIFEAUTOREPAIR.COM / ABC, Attn METLIFEAUTOREPAIR.NET
Claim Number: FA1108001402269
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Gary Saposnik of Melbourne IT Digital Brand Services, California, USA. Respondent is ABC, Attn METLIFEAUTOREPAIR.COM / ABC, Attn METLIFEAUTOREPAIR.NET (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <metlifeautorepair.com> and <metlifeautorepair.net>, registered with Network Solutions, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2011; the National Arbitration Forum received payment on August 8, 2011.
On August 10, 2011, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <metlifeautorepair.com> and <metlifeautorepair.net> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@metlifeautorepair.com, postmaster@metlifeautorepair.net. Also on August 10, 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 September 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <metlifeautorepair.com> and <metlifeautorepair.net> domain names are confusingly similar to Complainant’s METLIFE mark.
2. Respondent does not have any rights or legitimate interests in the <metlifeautorepair.com> and <metlifeautorepair.net> domain names.
3. Respondent registered and used the <metlifeautorepair.com> and <metlifeautorepair.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Life Insurance Company, has been in operation since 1968, and provides products and services related to the insurance, annuities, pension fund, non-medical health insurance, property insurance, casualty insurance, and savings and retirement products and services industries. Complainant has registered the METLIFE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,541,862 registered May 30, 1989).
Respondent, ABC, Attn METLIFEAUTOREPAIR.COM / ABC, Attn METLIFEAUTOREPAIR.NET, registered the disputed domain names on July 18, 2008. The disputed domain names redirects users to the website <suddenimpactauto.com>, which is the site of Sudden Impact Auto Body & Repair, a third-party business that provides auto body repairs, and includes services competitive with Complainant’s business, including the assistance in handling insurance claims subsequent to an auto accident.
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 asserts that it has established rights in the METLIFE mark pursuant to Policy ¶ 4(a)(i). Previous panels have determined that registration of a mark with a trademark authority is sufficient to confer rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant has presented evidence of its registration of the METLIFE mark with the USPTO (Reg. No. 1,541,862 registered May 30, 1989). The Panel holds that this is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). 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).
Complainant also contends that Respondent’s <metlifeautorepair.com> and <metlifeautorepair.net> domain names are confusingly similar to Complainant’s METLIFE mark for the purposes of Policy ¶ 4(a)(i). Complainant argues that Respondent’s domain names wholly incorporate Complainant’s mark, while adding the terms “auto” and repair,” which relate to Complainant’s auto insurance business, as well as the generic top-level domains (“gTLDs”) “.com” and “.net”. The Panel finds that terms “auto” and “repair” bear an obvious relationship to Complainant’s auto insurance business, which includes services related to assistance with auto repairs after an accident. As such, these terms cannot distinguish the disputed domain names from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also 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.”). Additionally, the addition of the generic top-level domain (gTLD) “.com” is insufficient to distinguish the disputed domain name. 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). In light of these findings, the Panel holds that Respondent’s domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Previous panels have agreed that Complainant shoulders the initial burden of presenting a prima facie case, and that the burden then shifts to Respondent once this has been done. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). In the immediate case, Complainant has satisfied its burden, but Respondent has not. Some panels have construed this as evidence that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(i). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel will continue to examine the record, however, to determine whether such rights or legitimate interests do in fact exist.
Complainant alleges that Respondent is not commonly known by the <metlifeautorepair.com> and <metlifeautorepair.net> domain names as envisioned by Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the domain names as “ABC, Attn METLIFEAUTOREPAIR.COM / ABC, Attn METLIFEAUTOREPAIR.NET.” Although Respondent may appear to be commonly known by this WHOIS information, the Panel cannot make such a finding in the absence of the any other evidence that Respondent is, in fact, commonly known by the disputed domain names prior to their registrations. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). Additionally, Complainant states that it has not authorized or licensed Respondent to register or use the disputed domain names. Without the benefit of a Response, the Panel finds no evidence that Respondent is commonly known by the <metlifeautorepair.com> and <metlifeautorepair.net> domain names, and therefore must hold that Respondent is not commonly known by the disputed domain names as envisioned by Policy ¶ 4(c)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Complainant further alleges that Respondent’s use of the disputed domain names does not constitute either 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). Respondent uses the disputed domain names to redirect users to the website <suddenimpactauto.com>, which is the site of Sudden Impact Auto Body & Repair, a third-party business that provides auto body repairs, and includes services competitive with Complainant’s business, including the assistance in handling insurance claims subsequent to an auto accident. Past panels have found that the resolution of a disputed domain name to a website offering competing services does not represent 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). The Panel concludes that Respondent’s use of the disputed domain names does not constitute either 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant urges that Respondent’s use of the disputed domain names to resolve to a competing website constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). The Panel agrees. Users who are innocently seeking information about Complainant and its business that reach the disputed domain names will instead be presented with information about a competitor’s business. Some of these users may purchase the competitor’s products at Complainant’s expense. The Panel finds this to constitute bad faith registration and use under Policy ¶ 4(b)(iii). See 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).”); 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).”).
Complainant further alleges that Respondent’s use of the <metlifeautorepair.com> and <metlifeautorepair.net> domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel assumes that Respondent benefits financially from its use of the disputed domain names. Through its use of confusingly similar domain names, Respondent seeks to create confusion as to Complainant’s affiliation with, or endorsement of, the domain names. In this way, Respondent attempts to attract visitors to its site by playing off of the popularity of Complainant’s mark. The traffic that Respondent can generate at the disputed domain names, the more commercial gain Respondent will presumably realize. The Panel holds that this type of business model constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
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 <metlifeautorepair.com> and <metlifeautorepair.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 15, 2011
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