Metropolitan Life Insurance Company v. RegisterFly.com - Ref-R# 51932528 c/o Whois Protection Service - ProtectFly.com
Claim Number: FA0611000840639
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Heidi
C. Constantine of Metropolitan Life Insurance Company, 1
Met Life Plaza, 27-01 Queens Plaza North, Long Island City, NY, 11101. Respondent is RegisterFly.com - Ref-R# 51932528 c/o Whois
Protection Service - ProtectFly.com (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <metlifeinsurance.info>, registered with RegisterFly.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 13, 2006; the National Arbitration Forum received a hard copy of the Complaint November 15, 2006.
On November 16, 2006, RegisterFly.com confirmed by e-mail to the National Arbitration Forum that the <metlifeinsurance.info> domain name is registered with RegisterFly.com and that Respondent is the current registrant of the name. RegisterFly.com verified that Respondent is bound by the RegisterFly.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 22, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 12, 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@metlifeinsurance.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <metlifeinsurance.info>, is confusingly similar to Complainant’s METLIFE mark.
2. Respondent has no rights to or legitimate interests in the <metlifeinsurance.info> domain name.
3. Respondent registered and used the <metlifeinsurance.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan
Life Insurance Company, is an international leader in the insurance, annuities,
pension fund, residential and commercial mortgage, lending, real estate
brokerage and management services.
Complainant is one of the largest life insurance companies in
Respondent registered the <metlifeinsurance.info> domain name December 3, 2005. Respondent’s disputed domain name resolves to a website that displays information on and hyperlinks to third-party websites that are in direct 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 will draw such inferences as the Panel 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 Complainant to 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’s trademark registrations with the USPTO sufficiently establish Complainant’s rights in the METLIFE mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The Panel further finds that Respondent’s <metlifeinsurance.info> domain name is confusingly similar to Complainant’s METLIFE mark as it contains Complainant’s mark in its entirety with the additions of the common term “insurance” which has an obvious relationship to services offered by Complainant. In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), the panel found confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark). Accordingly, the Panel finds that the addition of a term that bears an obvious relationship to Complainant’s business does not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶
4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the mark contained within the disputed domain name. Further, Complainant alleged that Respondent has no such rights. Complainant initially must establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant makes a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the <metlifeinsurance.info> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once complainant asserts that respondent has no rights or legitimate interests with respect to the domain, the burden shifts to respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <metlifeinsurance.info> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel examines the record to determine if it suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. No evidence in the record suggests that Respondent is or has ever been known by the <metlifeinsurance.info> domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel declined to find rights or legitimate interests where the respondent was not commonly known by the mark and had never applied for a license or permission from the complainant to use the trademarked name. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Respondent’s <metlifeinsurance.info> domain name resolves to a website that displays hyperlinks to various third-party websites in direct competition with Complainant. The Panel infers that Respondent is operating the disputed domain name and corresponding website for its own commercial gain by receiving click-through fees for the links displayed on its website. The Panel finds that such use 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant also alleged that Respondent acted in bad faith
in registering and using a domain name that contains Complainant’s protected
mark without Complainant’s permission to do so.
Based on the uncontested evidence presented by Complainant, the Panel
infers that Respondent receives click-through fees for diverting Internet users
to a website that displays links that resolve to third-party websites. Additionally, Respondent’s disputed domain
name is capable of creating confusion as to Complainant’s affiliation with the <metlifeinsurance.info> domain name
and resulting website. The Panel finds
that such use of the disputed domain name constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
Moreover, the Panel finds that Respondent’s use of the disputed domain name to display links to third-party websites that are in direct competition with Complainant constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel finds that Complainant satisfied 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 <metlifeinsurance.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 4, 2007.
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