Metropolitan Life Insurance Company v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1108001403559
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Gary Saposnik of Melbourne IT DBS, California, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com>, registered with Moniker Online Services 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 16, 2011; the National Arbitration Forum received payment on August 16, 2011.
On August 23, 2011, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names are registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@metlif.com, postmaster@metlifeinsurancecompany.com, and postmaster@metliferetirelink.com. Also on August 23, 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 14, 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 <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names are confusingly similar to Complainant’s METLIFE mark.
2. Respondent does not have any rights or legitimate interests in the <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names.
3. Respondent registered and used the <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Life Insurance Company, offers insurance, annuity, pension fund, non-medical health, property, and casualty insurance services, as well as savings and retirement products. Complainant offers such services through a variety of marks, many of which encompass the METLIFE mark which Complainant has registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,541,862 registered May 30, 1989).
Respondent, Domain Admin / Taranga Services Pty Ltd, registered the <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names on November 19, 2005, January 8, 2006, and October 21, 2005, respectively. Respondent’s disputed domain names each have in the past or currently do resolve to websites which display third-party links to competing insurance businesses.
Respondent has been the respondent in previous UDRP cases in which Respondent has registered domain names containing variations of well known trademarks and has been ordered to transfer those domain names to the respective trademark holders. See Enterprise Holdings, Inc. v. Taranga Servs. Pty Ltd, FA 1385861 (Nat. Arb. Forum June 8, 2011); see also Foster & Smith, Inc. v. Taranga Servs. Pty Ltd, FA 1387335 (Nat. Arb. Forum June 1, 2011); see also Citigroup, Inc. v. Taranga Servs. Pty Ltd, FA 1377829 (Nat. Arb. Forum April 22, 2011).
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 Complainant has presented sufficient evidence to establish rights in its METLIFE mark under Policy ¶ 4(a)(i). Complainant has submitted several trademark certificates that it owns with the USPTO for its marks, including those for the METLIFE mark (e.g., Reg. No. 1,541,862 registered May 30, 1989). The Panel further finds that Complainant is not required to register its mark in the region of Respondent’s residence in order to establish rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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).
Complainant alleges that the <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names are confusingly similar to Complainant’s METLIFE mark. Complainant notes that the <metlif.com> domain name merely removes the letter “e” from its mark while adding the generic top-level domain (“gTLD”) “.com.” Further, Complainant notes that the <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names contain its entire mark, while adding the descriptive terms “insurance” and “company” or “retire” and “link,” along with the gTLD “.com.” Complainant argues that in either case, the domain names are confusingly similar to the METLIFE mark. The Panel agrees and finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also 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 finds that Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not possess rights and legitimate interests in the <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names. 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.”); see also 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 Policy ¶ 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 established a prima facie case that Respondent lacks rights and legitimate interests in the <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names. Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence on record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant alleges that the WHOIS information for the disputed domain names “indicates that the Registrant of these disputed domain names is ‘Taranga Services Pty Ltd,’” which shows no relationship to the METLIFE mark. Further, Complainant argues that Respondent has never been known by the name “Metlife,” or used any similar trademark in commerce. Complainant also notes that it has not granted Respondent permission to use its mark in any way. The Panel notes that Respondent has failed to file a Response in this matter to refute Complainant’s claims. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
Complainant notes the following uses employed by Respondent for the disputed domain names either previously or presently:
1. <metlif.com> previously resolved to a website providing links to third-party websites offering insurance services in competition with Complainant;
2. <metlifeinsurancecompany.com> currently resolves to a website providing third-party links to websites offering insurance services in competition with Complainant; and
3. <metliferetirelink.com> currently redirects to a website located at <metropolitanlifeinsurancecompany.com>, which offers links to competing insurance companies.
Complainant argues that none of the uses above give rise to rights or legitimate interests in the disputed domain names to Respondent. Further, Complainant alleges that Respondent receives commercial benefit from its use of the domain names. The Panel finds, upon looking at Complainant’s attached screen shots, that Respondent’s websites also contain a search engine and third-party links to unrelated businesses and websites as well. Therefore, the Panel finds that Respondent is not making 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) of any of the disputed domain names. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also 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)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant alleges that Respondent has been the respondent in many previous UDRP cases in which Respondent has registered domain names containing variations of well known trademarks and has been ordered to transfer those domain names to the respective trademark holders. See Enterprise Holdings, Inc. v. Taranga Servs. Pty Ltd, FA 1385861 (Nat. Arb. Forum June 8, 2011); see also Foster & Smith, Inc. v. Taranga Servs. Pty Ltd, FA 1387335 (Nat. Arb. Forum June 1, 2011); see also Citigroup, Inc. v. Taranga Servs. Pty Ltd, FA 1377829 (Nat. Arb. Forum April 22, 2011). Complainant argues that such a pattern of abusive domain name registrations is evidence of bad faith in this instance. The Panel agrees and finds that Respondent registered and is using the disputed domain names in bad faith pursuant to 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).
Further, Complainant has presented evidence which has established that Respondent is using the disputed domain names to divert Internet traffic to the websites of Complainant’s competitors in the insurance industry. The Panel finds that such use of the domain names in question is evidence of bad faith registration and use 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 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).
Lastly, Complainant argues that Respondent registered and is using the disputed domain names for commercial gain by confusing Internet users into visiting its websites. Complainant alleges that Respondent has attempted to create a false impression that Respondent is someone associated with Complainant, and that Internet users who accidentally visit Respondent’s website help Respondent to profit from such a scheme. Complainant alleges that Respondent receives click-through fees from the links placed on its websites. The Panel agrees with Complainant, and finds that Respondent registered and is using the disputed domain names in bad faith pursuant to 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 Policy ¶ 4(a)(iii) is 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 <metlif.com>, <metlifeinsurancecompany.com>, and <metliferetirelink.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 19, 2011
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