Metropolitan Life Insurance Company v. Kenneth Traina
Claim Number: FA1105001391120
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Gary Saposnik of Melbourne IT Digital Brand Services, California, USA. Respondent is Kenneth Traina (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metlifestadium.com>, registered with Melbourne IT.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2011; the National Arbitration Forum received payment on May 27, 2011.
On June 1, 2011, Melbourne IT confirmed by e-mail to the National Arbitration Forum that the <metlifestadium.com> domain name is registered with Melbourne IT and that Respondent is the current registrant of the name. Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 June 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@metlifestadium.com. Also on June 2, 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.
A timely Response was received and determined to be complete on June 23, 2011.
On June 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C., as Panelist.
On June 27, 2011 Complainant filed a timely Additional Submission.
Complainant requests that the domain name(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant submits:
· Complainant’s METLIFE mark is famous throughout the world for the goods and services the mark represents.
· Complainant has rights in the METLIFE mark and submits evidence of several METLIFE trademark registrations with the United States Patent and Trademark Office (“USPTO”), including Reg. 1,541,862 issued May 30, 1989. In November of 1994, Complainant registered the domain name <www.metlife.com>. Complainant says all the METLIFE trademark registrations are valid and subsisting and constitute prima facie evidence of their validity and conclusive evidence of Complainant’s exclusive right to use the mark in commerce in connection with the goods named therein and commercially related goods.
· Complainant has used the METLIFE mark continuously in commerce since at least as early as 1994 for an ever-increasing range of goods and services, and has expended hundreds of millions of dollars to advertise and market its METLIFE products and services. Complainant’s long-term, prominent usage of its famous METLIFE mark has generated extensive fame and goodwill and widespread consumer recognition for the METLIFE mark identifying it exclusively with Complainant and Complainant’s products.
· In June 2008, Complainant agreed to be the first major marketing partner of the New Meadowlands Stadium in New Jersey. The stadium is the home of the New York Giants and New York Mets football teams and is a major entertainment venue in the midst of the country’s largest media market. Complainant was granted exclusive naming rights to brand one of the four main entrances to the new stadium as well as one of the four main scoreboards inside the stadium. Complainant has also been named the official life insurance company of the Giants and the Jets.
· Complainant is a leader in insurance, annuities, pension funds, non-medical health and property and casualty insurance, savings and retirement products for individuals, small businesses and large institutions. Complainant is a leader in residential and commercial mortgage, lending, real estate brokerage and management services.
· Complainant has major operations, affiliates and representative offices throughout the Americas, Europe and Asia. Complainant has seventeen offices within 30 miles of Respondent’s listed address in New Jersey.
· The METLIFE mark has become a famous and distinctive mark throughout the world as a symbol of the high quality standards Complainant maintains for its products and related services.
· A search reveals that Respondent registered the Disputed Domain Name on September 20, 2009, which was after Complainant acquired its trademark rights in the METLIFE mark and after the press release in Respondent’s home state announcing Complainant’s naming rights agreement for the New Meadowlands Stadium.
· The Disputed Domain Name is confusingly similar to Complainant’s METLIFE mark because the name incorporates the entire mark and then adds the word “stadium”. This is an obvious attempt to opportunistically register a domain name related to Complainant’s stadium naming rights. Panels have consistently concluded that the addition of a generic or descriptive term to a complainant’s trademark does not preclude a finding of confusing similarity.
· Respondent has no rights or legitimate interests in the Disputed Domain Name. Where Complainant’s mark and name are so well known and widely recognized throughout the world and have been used in connection with a wide variety of products for so many years, there can be no legitimate use by Respondent. Complainant has been doing business in the United States for over 100 years including under the METLIFE mark since at least 1968. The mark itself has been registered since 1989 and the <metlife.com> domain name has been in use since 1994. Chances are slim to none that Respondent was not aware of the famous METLIFE mark before he registered the Disputed Domain Name in 2009.
· Respondent has never been known as by the Disputed Domain Name. His name is Kenneth Traina and he has no apparent relationship with Complainant or any stadium. Respondent has intentionally chosen a domain name as a way to attract Internet users by adopting the famous METLIFE mark in an effort to profit from Complainant’s valuable intellectual property rights and in an effort to prevent Complainant from reflecting its mark in a domain name related to its stadium naming rights. Therefore Respondent’s registration of the Disputed Domain Name cannot be legitimate.
· There is no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Disputed Domain Name which incorporates Complainant’s mark in its entirety.
· Respondent’s actions evidence bad faith because he has registered the Disputed Domain Name in order to prevent Complainant, owner of the METLIFE mark, from reflecting the mark in a corresponding domain name relating to its naming rights in the stadium. Respondent has engaged in a pattern of such conduct by registering other domain names incorporating well-known and famous trademarks in conjunction with their naming rights to a popular venue in an attempt to profit by “opportunistic bad faith”. Complainant refers to: Research in Motion Limited v. Dustin Picov, D2001-0492 (WIPO May 31, 2001); Wikimedia Foundation Inc. v. KJevo Oux a/k/a/ Online Marking Realt, D2009-0798 (WIPO Aug. 7, 2009).
· Respondent has registered several domain names incorporating trademarks such as PEPSI and TIMEX. These include <timexcentre.com>, <pepsixanadu.com>, <meadowlandspepsiglobe.com>, <pepsiglobe.com>, <xanadupepsi.com>, <thepepsiglobe.com>, and <xanadupepsiglobe.com>. Many of these other registrations by Respondent occurred after a press release related to naming rights for a venue affiliated with the trademark holder, with some registrations occurring within a few days of the press release.
· While the Disputed Domain Name resolves to a blank page stating “Powered by Yahoo! Web Hosting”, the consensus view in WIPO Overview 2.0 is that bad faith registration and use can be found in cases of passive holding when the circumstances warrant. In this matter, the cumulative circumstances are that the Complainant has a well-known trademark, obviously known to Respondent, and the Disputed Domain Name relates to stadium naming rights for a stadium in Respondent’s home state, which naming rights were widely publicized. In addition, Respondent has engaged in a pattern of conduct registering domain names containing the trademarks of others. The Panel is invited to draw inferences about bad faith use given the circumstances around registration.
B. Respondent
Respondent submits:
· The Disputed Domain Name does contain the METLIFE name attached to the word “stadium” which is not a trademark name when these two references are joined as one. The word “stadium” is of more relevance in this domain name as it is associated with a particular place where sports or other events take place. It is public information that Complainant does have a relationship with the “New Meadowlands Stadium” which is directly targeted as an advertising and marketing campaign that would generate increased name recognition for METLIFE. This domain therefore would not be confusing to an internet user as a stadium is not commonly known as being a place of business.
· The right and interest Respondent claims is strictly fan based to the “New Meadowlands Stadium” for any sports or other venue performed at the Stadium.
· The domain name in question has at no time been used since its purchase on September 19th 2009 and has not been offered for sale and will at no time be intended for sale. Respondent’s initial objective was to create a fan based website/blog related strictly to the social network of the fans associated with any sports or venue performance at the New Meadowlands Stadium. Respondent has not currently begun this endeavor but plans to do so in the near future. Respondent also has several other domain names all related to the Meadowlands complex to be again used with the same purpose. Respondent has never profited at all nor does Respondent plan to profit at all from the use of these few domain names, therefore Respondent disputes the initial claim of using in bad faith. This domain name is not to be a revenue source of any kind and to only be used as a social network of information related to sports or other event performances at the “New Meadowlands Stadium”.
C. Additional Submissions
Complainant filed an additional submission. New points made in the submission include:
· In his Response, Respondent has acknowledged that he was fully aware of the relationship between Complainant and the stadium naming rights based on public information and Complainant’s advertising and marketing campaign.
· While Respondent claims the registration was “strictly fan based to the New Meadowlands Stadium for any sports or other venue performed at the Stadium”, he has failed to provide any proof of use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services.
· Respondent has also failed to provide any evidence of demonstrable preparations to use the domain name in connection with a “fan site” prior to receiving Complainant’s notice of this dispute. Neither has Respondent provided evidence of demonstrable preparations to use as “fan sites” the other domain names that he registered which also correspond to well-known marks combined with venues in the New Jersey area, including <timexcentre.com>, <pepsixanadu.com>, <meadowlandspepsiglobe.com>, <pepsiglobe.com>, <xanadupepsi.com>, <thepepsiglobe.com>, and <xanadupepsiglobe.com>. Respondent’s claims that he plans to use these sites for a fan based website/blog are unsupported and are contrary to his actions in that some of these domain names have been registered for more than three years and still contain no content.
1. Complainant has established trademark rights in the METLIFE mark.
2. The Disputed Domain Name <www.metlifestadium.com> is confusingly similar to Complainant’s METLIFE mark.
3. Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
4. Respondent has registered and is using the Disputed Domain Name in bad faith.
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."
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 alleges that it has rights in the METLIFE mark by virtue of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (including Reg. 1,541,862 issued May 30, 1989). The USPTO trademark registrations sufficiently prove Complainant’s rights in the METLIFE mark for the purposes of 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 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 argues that Respondent’s <metlifestadium.com> domain name is confusingly similar to Complainant’s METLIFE mark because the Disputed Domain Name consists only of Complainant’s mark, the generic term “stadium,” and the generic top-level domain (“gTLD”) “.com.” The Panel agrees and specifically rejects Respondent’s contention that the word “stadium” is the important word in the Disputed Domain Name. The METLIFE mark is the distinctive element in the Disputed Domain Name. The word “stadium” is, without more, merely a generic term.
Adding a generic term to Complainant’s mark fails to remove the Disputed Domain Name from the realm of confusing similarity. The Panel therefore finds the Disputed Domain Name is confusingly similar to Complainant’s METLIFE mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
While it is now trite to even mention, the top level domain gTLD has no effect on the Policy ¶ 4(a)(i) confusingly similar analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization for Respondent to use the METLIFE mark in the Disputed Domain Name. The WHOIS information for the <metlifestadium.com> domain name lists the registrant as “Kenneth Traina,” which has no apparent relationship to the Disputed Domain Name. This lack of evidence signifies that Respondent is not commonly known by the Disputed Domain Name and thus does not possess rights and legitimate interests in the Disputed Domain Name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant has met the initial burden and therefore the burden shifts to Respondent to prove rights or legitimate interests. The Panel notes that on the evidence before it, the Panel draws the inference that Respondent had actual knowledge of Complainant’s METLIFE mark at the time he registered the Disputed Domain Name. Respondent has admitted this to be the case by admitting he registered the Disputed Domain Name after it had become public information that Complainant has a relationship with the New Meadowlands Stadium in New Jersey.
There is no evidence before the Panel that Respondent made any demonstrable preparations to use the Disputed Domain Name for a bona fide offering of goods or services before he received notice of this dispute. There is no evidence Respondent has been commonly known by the domain name. There is no evidence of legitimate noncommercial use of the Disputed Domain Name by Respondent.
Even though he says he planned to use the site for a website/blog, there is no evidence whatsoever that this is the case. The <metlifestadium.com> domain name resolves to a blank webpage displaying no content. This failure to actively use the Disputed Domain Name is not 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). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the Disputed Domain Names demonstrates that the respondent is not using the Disputed Domain Names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Respondent has failed to establish rights or legitimate interests in the Disputed Domain Name.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). In this case, the Panel finds that the totality of the circumstances establish bad faith registration and use of the Disputed Domain Name.
As the Panel has already found, Respondent had actual knowledge of Complainant and its rights in the METLIFE mark before he registered the Disputed Domain Name. This is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the Disputed Domain Names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
As to bad faith use, the Disputed Domain Name does not resolve to a website with any active, original content. Respondent’s failure to actively use the Disputed Domain Name supports a finding of Respondent’s bad faith registration and use according to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Respondent has, in very similar circumstances, registered domain names incorporating other famous marks such as PEPSI and TIMEX and has passively held these domain names. This establishes a pattern of conduct that also supports a finding of bad faith. In addition, there is no evidence whatsoever that Respondent intended to use the Dispute Domain Name or any of the other domain names he registered for any purpose. There is no evidence of preparation to use the Disputed Domain Name or other domain names.
In all the circumstances, and for the reasons set out above, the Panel finds Respondent has registered and is using the Disputed Domain Name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metlifestadium.com> domain name be TRANSFERRED from Respondent to Complainant.
_
Anne M. Wallace, Q.C. Panelist
Dated: June 28, 2011
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