Metropolitan Life Insurance
Company v. Robert Bonds
Claim Number: FA0612000873143
PARTIES
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 City, NY 11101. Respondent is Robert Bonds (“Respondent”),
The domain name at issue is <metropolitanlife.us>, registered
with Go
Daddy Software, Inc.
PANEL
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 18, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 18, 2006.
On
On January 9, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 29, 2007 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@metropolitanlife.us by
e-mail in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution
Policy (the “Rules”).
A timely Response was received and determined to be complete on
An Additional Submission from Complainant was received by the Forum on
February 7, 2007. Since this submission
was after the deadline, the Forum does not consider it to be in compliance with
Supplemental Rule #7. Respondent timely
filed a Response to Complainant’s Additional Submission. In order to be fair to both parties and consider
all relevant information the Panel, as the Rules permit, has considered both
Additional Submissions in making its decision. Neither made any substantial change from the
original Complaint or Response.
On February 2, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Louis E. Condon as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
makes the following assertions:
1. Respondent’s <metropolitanlife.us> domain name is confusingly similar to Complainant’s Metlife Family of marks and particularly its “Metropolitan” and “Metropolitan Life and Affiliated Companies” marks, both of which were obtained in 1989.
2. Respondent does not have any rights or legitimate interests in the <metropolitanlife.us> domain name.
3. Respondent registered and used the < metropolitanlife.us> domain name in bad faith.
B Respondent makes the following assertions:
1. Respondent alleges that the <metropolitanlife.us> domain name is not confusingly similar to Complainant’s METLIFE mark because Complainant abbreviates the term “met” in its mark and Respondent includes the entire term “metropolitan,” a commonly used term.
2. Respondent claims that it registered the
disputed domain name to create a
journal or magazine
“that publishes articles related to the changes in urban life.” Respondent claims it is an “accomplished
academic educator, a published author, and an authority on a multitude of
subjects, one of which is urban life in the 19th and early 20th century.” Respondent further claims that the current
website at the disputed domain name is merely parked with GoDaddy until
Respondent publishes his website.
3. Respondent also argues that the terms of the <metropolitanlife.us> domain name are generic and of common use and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.
FINDINGS
The METLIFE Family of
Marks are internationally famous throughout the world for the goods and
services they represent.
Complainant’s long-term, prominent usage of its famous METLIFE Family of
Marks has generated extensive fame and goodwill and widespread consumer
recognition for the METLIFE Family of Marks as identifying exclusively
Complainant and Complainant’s products. Complainant
is a leader in the insurance, annuities, pension fund, residential and
commercial mortgage lending, real estate brokerage and management
services. In addition to life,
non-medical health and property and casualty insurance, MetLife is a leader in
savings and retirement products and services for individuals, small businesses
and large institutions. MetLife is the
largest life insurer in terms of life insurance “in-force” in
Respondent’s <metropolitanlife.us> web site sends users to a Go Daddy “park” page which includes a variety of links to third party insurance resellers, which are in no way related to Complainant. Respondent owns stock in and is insured by Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for .usTLD Dispute
Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Given the
similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”)
and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in
rendering its decision.
Complainant asserts that it has
registered the METLIFE mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,541,862 issued May 30, 1989). The Panel finds that this trademark
registration adequately demonstrates Complainant’s rights in the mark under
Policy ¶ 4(a)(i). See Miller Prods.
The Panel finds that the <metropolitanlife.us> domain name is
confusingly similar to Complainant’s METLIFE Family of Marks pursuant to Policy
¶ 4(a)(i). The disputed domain name
merely spells out the term “metropolitan,” a term Complainant abbreviates to
“met” in its METLIFE mark, and such a change does not sufficiently distinguish
the disputed domain name from the mark under Policy ¶ 4(a)(i). Further, Complainant has a trademark for the
word “metropolitan” and “metropolitan life”. See Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that,
given the similarity of the complainant’s marks with the domain name, consumers
will presume the domain name is affiliated with the complainant; the respondent
is attracting Internet users to a website, for commercial gain, by creating a
likelihood of confusion with the complainant’s mark as to the source,
sponsorship, or endorsement of the respondent’s website); see also Asprey & Garrard
Ltd v. Canlan Computing, D2000-1262
(WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is
confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY
marks).
The Panel finds that Policy ¶
4(a)(i) has been satisfied
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.”).
Respondent is not the owner or
beneficiary of a mark confusingly similar to the <metropolitanlife.us> domain name. Complainant has established
rights in the METLIFE mark and Respondent has not come forward with any
evidence showing it is the owner or beneficiary of a mark identical to the
disputed domain name pursuant to Policy ¶ 4(c)(i). See
Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum
Complainant
maintains that Respondent registered the domain name under the name “Robert
Bonds,” and there is no other evidence in the record suggesting that Respondent
is commonly known the by <metropolitanlife.us>
domain name. The Panel agrees with these assertions, and accordingly
finds that Respondent has not established rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
Moreover,
Complainant claims that Respondent’s <metropolitanlife.us> domain name resolves to a commercial web directory
featuring links to Complainant’s competitors in the insurance industry. Complainant maintains that it is reasonable
to conclude that Respondent receives pay-per-click fees for each Internet user
it redirects to competing websites. The Panel finds that Respondent is diverting Internet
users for commercial gain and that such use does not represent a bona fide offering
of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or
fair use of the disputed domain name under Policy ¶ 4(c)(iv). See The Royal Bank of Scot. Group plc v.
Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the
operation of a commercial web directory displaying various links to third-party
websites was not a use in connection with a bona fide offering of goods
or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to UDRP ¶ 4(c)(iii), as the respondent presumably earned
“click-through” fees for each consumer it redirected to other websites); see also Charles Letts & Co Ltd. v. Citipublications, FA 692150
(Nat. Arb. Forum Jul. 17, 2006) (finding that the respondent’s parking of a
domain name containing the complainant’s mark for the respondent’s commercial
gain did not satisfy UDRP ¶ 4(c)(i) or ¶ 4(c)(iii
Complainant contends that the
disputed domain name currently resolves to a parked web page with links to its
competitors in the insurance and financial services industries. The Panel finds that this use suggests that
Respondent registered and is using the <metropolitanlife.us>
domain name in order to disrupt Complainant’s business in violation of 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 UDRP ¶ 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 Instron Corp. v.
Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the
respondent registered and used the disputed domain names in bad faith pursuant
to UDRP ¶ 4(b)(iii) by using the disputed domain names to operate websites that
compete with the complainant’s business).
In addition, Complainant asserts that Respondent is using the <metropolitanlife.us> domain name to divert Internet users seeking its insurance and financial services under the METLIFE mark to a commercial web directory featuring advertisements and links to Complainant’s competitors. Complainant claims that Respondent likely receives click-through fees for each consumer it diverts to competing websites. The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusingly similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark. See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
If one buys into the Respondent’s
theory a number of well known marks, such as General Electric and General
Motors to name two, would be without protection because they consist of generic
and commonly used terms. The time and money spent in developing their names and
reputations would be for naught. The
same sort of recognition and meaning applies to “metropolitan life.”
DECISION
Complainant having established all three elements required under the usTLD
Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <metropolitanlife.us> domain name be TRANSFERRED from Respondent to
Complainant.
Louis E. Condon Panelist
Dated:
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