Metropolitan Life Insurance Company v. Digi Real Estate Foundation
Claim Number: FA0610000812352
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Heidi C. Constantine, of Metropolitan Life Insurance Company, 1 MetLife Plaza, 27-01 Queens Plaza North, Long Island, NY 11101. Respondent is Digi Real Estate Foundation (“Respondent”), P.O. Box 7-5324, Panama City N7 8DJ, PA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <metlifehomeinsurance.com>, registered with Nerd Names Corporation.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 5, 2006.
On October 6, 2006, Nerd Names Corporation confirmed by e-mail to the National Arbitration Forum that the <metlifehomeinsurance.com> domain name is registered with Nerd Names Corporation and that Respondent is the current registrant of the name. Nerd Names Corporation has verified that Respondent is bound by the Nerd Names Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@metlifehomeinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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." 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 <metlifehomeinsurance.com> domain name is confusingly similar to Complainant’s METLIFE mark.
2. Respondent does not have any rights or legitimate interests in the <metlifehomeinsurance.com> domain name.
3. Respondent registered and used the <metlifehomeinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan Life Insurance Company, has offered insurance, annuities, pension fund, residential and commercial mortgage, lending, real estate brokerage and management services under the METLIFE mark since at least as early as 1968. In connection with its offering of products and services, Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the METLIFE mark (e.g., Reg. No. 1541862 issued May 30, 1989).
Respondent, Digi Real Estate Foundation, registered the <metlifehomeinsurance.com> domain name on February 8, 2006. Respondent’s disputed domain name resolves to a website that provides links to third-party websites offering insurance services that directly compete with Complainant’s business.
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 provides evidence of federal trademark registrations for the METLIFE mark with the USPTO. As a result, the Panel finds that the registration of the METLIFE mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant has demonstrated rights in the METLIFE mark for purposes of 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); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)).
Moreover, the Panel finds that Respondent’s <metlifehomeinsurance.com> domain name is confusingly similar to Complainant’s METLIFE mark pursuant to Policy ¶ 4(a)(i). Respondent’s <metlifehomeinsurance.com> domain name consists of Complainant’s METLIFE mark, with the addition of the generic or descriptive terms “home” and “insurance,” and the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have consistently held that the addition of generic or descriptive terms to a mark does not create a distinct domain name pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); 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)). Additionally, prior panels have held that the addition of a gTLD does not negate the creation of confusing similarity between the mark and the resulting disputed domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel in the instant case concludes that Respondent’s <metlifehomeinsurance.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.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has sufficiently established a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
The evidence on record suggests that Respondent’s <metlifehomeinsurance.com>
domain name resolves to a website providing links to third-party websites that
offer insurance services in competition with Complainant’s business. As a result, the Panel finds that such use
by Respondent represents neither a bona fide offering of goods or
services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Charles
Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17,
2006) (finding that the respondent’s use of a domain name that was confusingly
similar to the complainant’s mark to display links to the complainant’s competitors
did not constitute 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 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).”).
Moreover, the Panel finds that the evidence on record fails to demonstrate that Respondent is commonly known by the <metlifehomeinsurance.com> domain name in accord with Policy ¶ 4(c)(ii). Complainant asserts that Respondent is neither authorized nor licensed to use Complainant’s registered METLIFE mark, and that Respondent is not affiliated with Complainant in any way. Furthermore, Respondent’s WHOIS information indicates that Respondent is known as “Digi Real Estate Foundation.” Therefore, the Panel concludes that the evidence on record does not demonstrate that Respondent is commonly known by the <metlifehomeinsurance.com> domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <metlifehomeinsurance.com> domain name resolves to a website featuring links to third-party websites that offer insurance in direct competition with Complainant’s business. The Panel presumes that Respondent generates click-through revenue as a result of the operation of the website located at the disputed domain name. Thus, the Panel finds that Respondent registered and used the <metlifehomeinsurance.com> domain name for the purpose of trading off of the goodwill associated with Complainant’s mark in order to divert Internet users to Respondent’s commercial website. Therefore, the Panel concludes that Respondent registered and used the <metlifehomeinsurance.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Moreover, the Panel finds that Respondent’s use of the <metlifehomeinsurance.com> domain name to operate a website offering links to insurance services in competition with Complainant suggests that Respondent registered and used the disputed domain name with the intent to disrupt Complainant’s business. Thus, the Panel concludes that such use by Respondent demonstrates registration and use of the <metlifehomeinsurance.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
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 <metlifehomeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 21, 2006
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