DECISION

Metropolitan Life Insurance Company v. Albert Jackson

Claim Number:  FA0408000314268

PARTIES

Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Leon Medzhibovsky of Fulbright & Jaworski, 666 Fifth Avenue, New York, NY 10103.  Respondent is Albert Jackson (“Respondent”), P.O. Box 2014, Georgetown, Grand Cayman, KY.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mybenefitsmetlife.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 18, 2004; the Forum received a hard copy of the Complaint on August 19, 2004.

On August 18, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <mybenefitsmetlife.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name.  Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 August 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 9, 2004 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@mybenefitsmetlife.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

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 <mybenefitsmetlife.com> domain name is confusingly similar to Complainant’s METLIFE mark.

2. Respondent does not have any rights or legitimate interests in the <mybenefitsmetlife.com> domain name.

3. Respondent registered and used the <mybenefitsmetlife.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Metropolitan Life Insurance Company, is in the business of providing insurance, savings and retirement services.  Complainant’s METLIFE mark is an abbreviated form of Complainant’s full company name. 

Complainant is the owner of numerous registrations in several countries and with the United States Patent and Trademark office for the METLIFE mark (Reg. No. 1,541,862 issued May 30, 1989).  Complainant’s origins date back to the year 1863, and Complainant has been providing insurance and related services for over 135 years. 

Complainant’s MetLife companies serve approximately 13 million households in the United States and provide benefits to approximately 37 million employees and family members.  Complainant has also developed a significant Internet presence at its <metlife.com> domain name and its <mybenefits.metlife.com> subdomain name.  The <mybenefits.metlife.com> subdomain name allows Complainant’s customers to log in and manage their non-medical benefits through a program designated as “MyBenefits.” 

Respondent registered the <mybenefitsmetlife.com> domain name on July 29, 2003.  Respondent is using the disputed domain name to resolve to a website that offers a search engine located at the <landing.domainsponsor.com> subdomain name, as well as numerous links to various commercial websites.  Some of the links are to Complainant’s direct competitors and some are to websites which offer goods and services completely unrelated to Complainant.  Additionally, the domain name subjects Internet users to numerous pop-up advertisements. 

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

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).

The <mybenefitsmetlife.com> domain name is confusingly similar to Complainant’s METLIFE mark because the domain name incorporates Complainant’s mark in its entirety, adding only the generic or descriptive terms “my” and “benefits.”  Furthermore, the phrase “mybenefits” formed by the two terms is obviously connected to Complainant’s “MyBenefits” online benefits program.  The mere addition of generic or descriptive terms to Complainant’s registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.    

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights to or legitimate interests in the <mybenefitsmetlife.com> domain name.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  Moreover, once Complainant makes the necessary prima facie showing, the burden shifts to Respondent to show that it does have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <mybenefitsmetlife.com> domain name to redirect Internet users to a website at the <landing.domainsponsor.com> subdomain name, which features a search engine, pop-up advertisements and hyperlinks to various commercial websites, including sites that offer the same goods and services as Complainant.  Respondent’s use of a domain name that is confusingly similar to Complainant’s METLIFE mark to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine and links to Complainant’s competitors and to commercial websites unrelated to Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name).

Finally, Respondent offered no evidence, and no proof in the record suggests, that Respondent is commonly known by the <mybenefitsmetlife.com> domain name.  Furthermore, Complainant has not authorized or licensed Respondent to use its METLIFE mark.  Thus, Respondent has not established rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally registered the <mybenefitsmetlife.com> domain name, containing Complainant’s well-known METLIFE mark in its entirety, for Respondent’s commercial gain.  Respondent’s domain name diverts Internet users who seek Complainant’s METLIFE mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s METLIFE mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Respondent registered the <mybenefitsmetlife.com> domain name primarily for the purpose of preventing Complainant, the owner of the METLIFE mark, from reflecting the mark in a corresponding domain name.  Furthermore, Respondent has lost numerous cases in which it registered a domain name which infringed upon the rights of other trademark holders.  See Expedia, Inc. v. Albert Jackson, FA 214461 (Nat. Arb. Forum, Jan. 13, 2004) (ordering that the <expediaairfares.com> domain name be transferred to Complainant); see also Wells Fargo & Company v. Albert Jackson, FA 271697 (Nat. Arb. Forum, June 29, 2004) (ordering the transfer of <mortgagewellsfargo.com> to Complainant); see also Bank of America Corp. v. Albert Jackson, FA 218872 (Nat. Arb. Forum, Jan. 26, 2004) (ordering the transfer of <bankofamericaforeclosure.com> to Complainant).  Thus, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <mybenefitsmetlife.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 1, 2004

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