Metropolitan Life Insurance Company v. Kevin Daste
Claim Number: FA0611000840648
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Katherine
L. Dominus, of Metropolitan Life Insurance
Company, 1 MetLife Plaza, 27-01 Queens Plaza North, Long Island City, NY
11101. Respondent is Kevin Daste
(“Respondent”),
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <metliferesource.com>, registered with Fabulous.Com Pty Ltd.
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.
Judge Harold Kalina(Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 15, 2006.
On November 13, 2006, Fabulous.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <metliferesource.com> domain name(s) is/are registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the name(s). Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 November 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 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@metliferesource.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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." 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 <metliferesource.com> domain name is confusingly similar to Complainant’s METLIFE mark.
2. Respondent does not have any rights or legitimate interests in the <metliferesource.com> domain name.
3. Respondent registered and used the <metliferesource.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan
Life Insurance Company, deals in insurance, annuities, pension funds,
residential and commercial mortgages, lending, real estate brokerage and
management services. In connection with
the provision of these financial services, Complainant holds numerous trademark
registrations, including the METLIFE mark registered with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,541,862 issued May 30, 1989).
Respondent registered the disputed domain name on October 21, 2005. The disputed domain name resolves to a website that features numerous text-based links to the websites of third-party competitors of 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 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 has established in this proceeding that it has rights in the METLIFE mark through registration with the United Sates Patent and Trademark Office and by continuous use of its mark in commerce for the last 135 years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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. Respondent has the burden of refuting this assumption).
Complainant asserts that the <metliferesource.com>
domain name is confusingly similar to its registered METLIFE mark. The disputed domain name contains
Complainant’s mark in its entirety and merely adds the term “resource.” The addition of a generic term, such as
“resource,” fails to sufficiently differentiate the disputed domain name from
Complainant’s mark that is wholly contained therein pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial 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 in support of its assertions, 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 Complainant to have 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 <metliferesource.com> domain name resolves to a website that featurues numerous text-based links to the websites of third-party competitors of Complainant. As a result, the Panel finds that such use neither amounts to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to 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 <metliferesource.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 “Kevin Daste” Therefore, the Panel concludes that the evidence on record does not demonstrate that Respondent is commonly known by the <metliferesource.com> domain name under Policy ¶ 4(c)(ii). See 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 “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <metliferesource.com> domain name resolves to a website that features numerous text-based links to the websites of competitors of Complainant. The Panel reasonably infers that Respondent generates click-through revenue as a result of the operation of the website that resolves from the disputed domain name. Thus, the Panel finds that Respondent has registered and used the <metliferesource.com> domain name for the purpose of trading off 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 <metliferesource.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 <metliferesource.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 disputed 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 <metliferesource.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 28, 2006
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