Metropolitan Life Insurance Company v.
Claim Number: FA0612000862882
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 Nan Wang (“Respondent”), Shijingshanqu, Bajiaobeili 38-607,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <metlifes.com> and <mmetlife.com>, registered with Communigal Communications 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 7, 2006.
On December 13, 2006, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <metlifes.com> and <mmetlife.com> domain names are registered with Communigal Communications Ltd and Respondent is the current registrant of the names. Communigal Communications Ltd has verified Respondent is bound by the Communigal Communications 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 December 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 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@metlifes.com and postmaster@mmetlife.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant owns
numerous valid and subsisting United States Trademark registrations (in
addition to many more non-United States trademark registrations) for the marks
including, but not limited to,
METLIFE
IC 36 – Providing underwriting and
administering group life, disability, and dental insurance.
IC 42 – Health Maintenance
Organizations
METLIFE
2-9
IC 16 – Printed material
IC 36 – Underwriting and
administering group life, disability, and dental insurance.
METLIFE
AAA
IC 36 – Pension and financial
Services
METLIFE
ADVICE
IC 36 – Financial Planning and
advice in the fields of insurance, retirement, investments, estate planning,
underwriting and administration.
METLIFE
BANK
IC 09 – Magnetic coded cards for
banking.
IC 36 – Banking Services, credit
card services.
METLIFE
EDELIVERY
IC 38 – Online computer services.
METLIFE
EXECUTIVECARE
IC 36 – Insurance and Financial
Services
METLIFE
FINANCIAL SERVICES
IC 36 – Insurance underwriting,
agency, brokerage and administration services.
METLIFE
INVESTORS
IC 36 – Underwriting, agency,
brokerage and administration services for individual and group life,
disability, long term care and dental insurance.
METLIFE
ONLINE
IC 36 – Providing online information
on financial services
IC 42 – Providing online information
about a wide variety of topics of general interest to consumers.
METLIFE
PREMIER
IC 36 – Financial Services.
METLIFE
RETIREMENT INCOME INSURANCE
IC 36 – Insurance and Financial
Services
(collectively the “METLIFE Family of Marks”).
1.
Factual
and Legal Grounds:
This Complaint is based on the following factual and legal grounds: ICANN Rule
3(b)(ix):
The METLIFE Family of
Marks are internationally famous throughout the world for the goods and
services they represent. Complainant has
used many of the METLIFE Family of Marks in commerce continuously since at least
as early as 1968 for an
ever-increasing range of goods and services, and Complainant has expended
hundreds of millions of dollars to advertise and market its METLIFE products,
resulting in sales of billions of dollars’ worth of services under the METLIFE
Family of Marks. 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 like, 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
The METLIFE Family of
Marks have become a famous and distinctive family of marks throughout the world
as a symbol of the high quality standards that MetLife maintains for its products
and related services. Courts in the
United States have held so including, MetLife Inc. v. Metropolitan National
Bank, 05 Civ. 3960 (S.D.N.Y. 2005), as have numerous panels including:
Metropolitan Life Insurance Company v. Albert Jackson, FA314268 (Oct. 2004), Metropolitan
Life Insurance Company v. Registrant info@fashionid.com (Oct. 2004),
Metropolitan Life Insurance Company v. Horoshiy, Inc. a/k/a Horoshiy, FA323764
(Oct. 2004), Metropolitan Life Insurance Company v. Horoshiy, Inc. a/k/a
Horoshiy, FA338340 (Nov. 2004), Metropolitan Life Insurance Company v. Michael
Huang, FA356348 (Dec. 2004), Metropolitan Life Insurance Company v. Ling Shun
Shing, FA370667 (Jan. 2005), Metropolitan Life Insurance Company v.
Netsolutions proxy services, FA381135 (Jan. 2005), and Metropolitan Life
Insurance Company v. SOLIT, FA390832 (Feb. 2005), and Metropolitan Life
Insurance Company and Metropolitan Casualty Insurance Company v. Gaines
Enterprises, FA474807 (June 2005).
Metropolitan Life Insurance Company v. Hyung Kim, FA781874 (October
2006) and Metropolitan Life Insurance Company v. Furture-3D, Inc., FA781876
(October 2006).
All of the
registrations are valid, subsisting, unrevoked and uncancelled. The registration of these marks constitutes prima facie evidence of their validity
and conclusive evidence of Complainant’s exclusive right to use the METLIFE
Family of Marks in commerce in connection with the goods named therein, and
commercially related goods. The
registration of the METLIFE Family of Marks also constitutes statutory
constructive notice to Respondent of Complainant’s ownership and exclusive
rights in the METLIFE Family of Marks.
Such constructive notice is in addition to the actual notice that
Respondent most certainly had given the extensive fame and reputation enjoyed
by Complainant’s METLIFE Family of Marks. Complainant maintains strict quality
control standards for all of its products and services sold under the METLIFE
Family of Marks. Complainant carefully
maintains the corporate image as well with its philanthropic endeavors. To
date, Complainant has spent hundreds of millions of dollars in advertising and
promoting Complainant’s products, services and the METLIFE Family of Marks, and
Complainant and affiliated companies have enjoyed billions of dollars in sales
of Complainant’s products and services.
Respondent’s
<metlifes.com> web site and Respondent’s <mmetlife.com> web site
exploit Complainant’s Mark as a way to lure users to their site and then to
provide links to other sites through “sponsored links.” Respondent presumably
receives a “click-through fee” anytime someone clicks on one of these links,
forwarding the user to another web site.
While Respondent’s
<metlifes.com> page mostly offers links to education and scholarships the
“popular categories” section on the right-hand side of the page has links to
mortgages, home insurance, and loans, all of which are services that
Complainant provides. The links on the
<mmetlife.com> page was much more insidious including links to dozens of
insurance resellers and direct competitors thought-out the entire site.
On December 19, 2005 a
letter was sent to Registerfly.com, who was listed as the owner of the domain
names at the time of the first letter, via certified mail and email requesting
immediate transfer of the <metlifes.com> and <mmetlife.com> domain
names. On January 3, 2006 Complainant sent a follow-up email to
Registerfly.com again requesting transfer of the domain names. Registerfly.com then released the
registration information of the domains by January 19, 2006. A letter was then drafted and sent to the new
person listed on the whois information, the current respondent, and was sent to
Respondent via Federal Express and email.
No response has ever been received, but the domain names have been
transferred from Registerfly.com to the Communigal Communications Ltd. The pages for these domain names are not
currently active.
Respondent was not and
has never been and authorized seller or licensee of Complainant’s METLIFE
products or services. Respondent’s use
of the domain names <metlifes.com> and <mmetlife.com> to attract
users for commercial gain is likely to cause consumer confusion, could divert
bona fide customers from purchasing Complainant’s products and could tarnish
Complainant’s reputation.
a. The Domain Names are Identical or
Confusingly Similar to Complainant’s Trademarks. The domain names
<metlifes.com> and <mmetlife.com> as used by Respondent is
confusingly similar to Complainant’s famous METLIFE Family of Marks. The Domain Name simply uses Complainant’s
trademark, METLIFE, and then adds a description of Complainant’s services. The addition of a generic word or phrase,
such as “retirelink,” in a domain name is not enough to avoid the likelihood of
confusion. See U-Haul International,
Inc. v. Affordable Web Productions, WIPO Case No. D2003-0511[1]. It is a well-established principle that
descriptive or generic additions, and particularly those which designate the
goods or services with which a mark might be used, does not avoid confusing
similarity of domain names and trademarks (as held in, inter alia, Time Warner
Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254, concerning over 100
domain names including <harrypotterfilms.net>).
Both domain names, <metlifes.com> and
<mmetlife.com> are nearly identical to the Complainant’s famous METLIFE
trademark but a letter has been added to the end or at the beginning in perhaps
in an effort to misdirect users who have accidentally made a typo in their
browser bar while typing the domain name they think will resolve to
Complainant’s web site. The omission of
a letter, addition of a letter, inversion of a letter or substitution of a
letter is commonly known as typosquatting and does not negate the confusingly
similar aspects of the domain name from Complainant’s marks pursuant to Policy
¶4 (a)(i). See Reuters Ltd. v. Global Net 2000, Inc., WIPO
Case No D2000-0441 (finding that a domain name which differs by only one letter
from a trademark has a greater tendency to be confusingly similar to the
trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, NAF Case
No. 95762 (finding that, by misspelling words and adding letters to words, a
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s mark).
b. Respondent
cannot demonstrate any legitimate interest in the Domain Names. Respondent registered the Domain Name only
after Complainant had established rights in its METLIFE Family of Marks. Respondent specifically chose the Domain
Names as a way of attracting users by adopting the Complainant’s famous METLIFE
Family of Marks.
Where, as here, Complainant’s marks and name
are so well known and so widely recognized, and have been used in connection
with such a wide variety of products for so many years, there can be no
legitimate use by Respondent. For
instance in Nike Inc. v. B.B. de Boer,
WIPO Case No. D2000-1397, the Panel concluded that the respondent had no legitimate
rights noting that it was difficult to see how the respondent could not have
known about the trademark NIKE. See also
There exists no relationship between
Complainant and Respondent that would give rise to any license, permission, or
authorization by which Respondent could own or use the Domain Name, which
incorporates the mark in its entirety and is confusingly similar to
Complainant’s marks. Respondent is not
known by the domain names <metlifes.com> or <mmetlife.com>. Indeed, Respondent is not making and never
has made any use of the Domain Names other than to forward users to web links
or “click-through” links to sites which sell products or services similar to
Complainant’s products or services. The
Respondent presumably gets some benefit from any type of click-through
linking. This demonstrates that
Respondent has no rights or legitimate interest in the Domain Name.
c. Respondent’s
actions evidence bad faith use and registration of the Domain Names under
¶4(b)(iv) of the Policy, because it is using the Domain Names to intentionally
attempt to attract, for commercial gain, internet users to its web site by
creating a likelihood of confusion with the Complainant’s famous METLIFE Family
of Marks as to the source, sponsorship, affiliation, or endorsement of its
websites. See Barnes & Noble College Bookstores, Inc.
v. Leasure Interactive, WIPO Case No. D2001-1216.
Rather, the Respondent must have registered
the Domain Names in bad faith. Guerlain
It has been
demonstrated that when a domain name subsumes in whole a famous trademark, such
as METLIFE, then any use of the domain name, including non-use, is evidence of
bad faith. See Pfizer Inc. v.
Sangwoo Cha, WIPO Case No. D2003-0256.
See Also Microsoft
Corporation v. MindKind, WIPO Case No. D2001-0193. Given the number of
click-through links and pop-up advertisements associates with Respondent’s web
site it is obvious that Respondent is garnering some type of financial gain by
registering a domain name which subsumes Complainant’s famous METLIFE
trademark.
Whether or not a visitor to Respondent’s site
would actually be confused once they had stumbled onto the site is
irrelevant. Panels have consistently
held that a likelihood of confusion can be found even though users would soon
discover the unlikelihood of a business relationship between Complainant and
Respondent. This is because Respondent
would have gained website traffic simply from the use of their confusing domain
name. See One Sex, WIPO Case No. D2000-0118.
Respondent has further demonstrated its bad
faith by its refusal to respond to a cease and desist letter sent to the
address listed in the official WHOIS record. Park Place Entertainment
Corporation v. A.E. Engles and Associates, WIPO Case No. D2003-0381. Respondent
may argue that the domain names do not resolve to an active site. Regardless of whether the Domain Names
currently resolve to active sites, passive holding of domain names is
actionable under the UDRP as is explained in Pfizer Inc. v. Order Viagra Online, WIPO Case No. D2002-0366. It is more likely than not that you have
registered this domain name with the eventual intent of exploiting MetLife’s
name and reputation for your own benefit.
Based on all of the above, it is evident that Complainant has met the
requirements of the Policy by demonstrating not only their own legitimate
interest in Complainant’s famous METLIFE Family of Marks, as evidenced by their
use of those marks, that Respondent has no rights or legitimate interests in
Complainant’s famous METLIFE Family of Marks, but also that Respondent
registered and has used the Domain Names in bad faith, and that Respondent’s interest
in the Domain Names is to unlawfully profit from it by luring users searching
for information on MetLife and their products, services and philanthropy and
instead displays click-through links to unrelated web sites as well as pop-up
ads to unrelated web sites.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Metropolitan
Life Insurance Company, is a leader in the insurance, annuities, pension fund,
residential and commercial mortgage, lending, real estate brokerage and
management service industries.
Complainant has major operations, affiliates and representative offices
in ten countries. Complaianant has been
using its METLIFE mark continuously since at least 1968 and holds registrations
with the United States Patent and Trademark Office (“USPTO”) for the METLIFE
mark (Reg. No. 1,541,862 issued May 30, 1989).
Complainant also operates a website at the <metlife.com> domain
name.
Respondent registered the <metlifes.com> domain name on January 12, 2004 and the <mmetlife.com> domain name on January 22, 2004. Respondent’s disputed domain names resolve to websites that display hyperlinks to third-party websites, some of which 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 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 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’s registrations with the USPTO sufficiently establish Complainant’s rights in the METLIFE mark under Policy ¶4(a)(i). 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel finds Respondent’s <metlifes.com> and <mmetlife.com>
domain names are confusingly similar to Complainant’s METLIFE mark under Policy
¶4(a)(i). The disputed domain names
contain Complainant’s mark in its entirety, with the addition of the letter “s”
to the end of the mark in the <metlifes.com> domain name, and the addition of the letter
“m” to the beginning of the mark in the <mmetlife.com>
domain name. The addition of such
letters does not negate the confusing similarity between the <metlifes.com> and <mmetlife.com> domain names and Complainant’s
mark. See Nat’l Geographic Soc’y v.
Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that
the domain name <nationalgeographics.com> was confusingly similar to the
complainant’s NATIONAL GEOGRAPHIC mark); see also
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant initially must establish Respondent has no rights or legitimate interests in the <metlifes.com> and <mmetlife.com> domain names. Once Complainant makes a prima facie case the burden of proof shifts and Respondent must show that it has rights or legitimate interests in the disputed domain names. 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 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 Respondent lacks rights and legitimate interests in the disputed domain names. 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 will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶4(c).
The Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <metlifes.com> and <mmetlife.com> domain names and there is no other evidence in the record to demonstrate Respondent is commonly known by the disputed domain names. Complainant asserts Respondent is not authorized to use Complainant’s METLIFE mark, and Respondent is not associated with Complainant in any way. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no 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"). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under the provisions of Policy ¶4(c)(ii).
Respondent is using the disputed domain names to operate websites that display hyperlinks to third-party websites, presumably for Respondent’s commercial benefit through the earning of click-through fees. Such use is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent is using the disputed domain names to operate
websites that display various hyperlinks, some of which offer services in
direct competition with Complainant.
Such use of the <metlifes.com> and <mmetlife.com> domain names
constitutes a disruption of Complainant’s business and is evidence of bad faith
registration and use under Policy ¶4(b)(iii).
See 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); 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
Respondent is using the disputed domain names to commercially benefit from the
good will associated with Complainant’s METLIFE mark. The <metlifes.com> and <mmetlife.com> domain names
are capable of creating a likelihood of confusion as to the source and
affiliation of Complainant with the disputed domain names and resulting
websites. Therefore, Respondent’s use of
the disputed domain names constitutes bad faith registration and use under
Policy ¶4(b)(iv). See 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); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
The Panel finds Policy
¶4(a)(iii) 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 <metlifes.com> and <mmetlife.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: January 22, 2007
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