DECISION

Metropolitan Life Insurance Company v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0409000323764

PARTIES

Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Leon Medzhibovsky, of Fulbright & Jaworski, 666 Fifth Avenue, New York, NY 10103.  Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg #518, Curacao, AN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <metlifeeservice.com>, registered with Nameking.com, Inc.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 3, 2004; the Forum received a hard copy of the Complaint on September 7, 2004.

On September 14, 2004, Nameking.com, Inc. confirmed by e-mail to the Forum that the domain name <metlifeeservice.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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 September 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 4, 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@metlifeeservice.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 October 11, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <metlifeeservice.com> domain name is confusingly similar to Complainant’s METLIFE mark.

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

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

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

FINDINGS

Complainant, Metropolitan Life Insurance Company, has been providing insurance and other related services in conjunction with the METLIFE mark since 1863.  Complainant and its affiliates offer a full range of insurance and other financial products and services not only at their physical locations, but these services are also offered to customers over the Internet or electronically.  Complainant also has major operations, affiliates and representative offices throughout the Americas, Europe, and Asia, including direct international insurance operations in ten countries.  Complainant owns trademark registrations with the United States Patent and Trademark Office for the METLIFE mark (e.g. Reg. No. 1,541,862, issued May 30, 1989).  Complainant also owns trademark registration rights in numerous countries around the world, including Argentina, Australia, Austria and the European Union. 

Respondent registered the <metlifeeservice.com> domain name on January 13, 2004, and has linked the domain name to a search engine located at <dp.information.com>, which provides links to various commercial websites and pop-up ads.  Many of the links contained therein direct Internet users to websites belonging to Complainant’s direct competitors. 

Respondent has also been found to have registered common marks as domain names with the intent to profit from the redirection of Internet traffic to search engine offering commissions in several previous Internet domain name disputes.

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 that it has rights in the METLIFE marks through registration with the United States Patent and Trademark Office and through continued use of its marks in commerce for over one hundred forty 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.

Respondent’s domain name is confusingly similar to Complainant’s METLIFE mark because the domain name incorporates Complainant’s mark with the addition of the generic or descriptive term “eservice.”  Complainant offers many services to its customers over the Internet or electronically.  Therefore, the mere addition of a generic or descriptive term that describes Complainant’s business does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the 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. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist.

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. 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 <metlifeeservice.com> domain name to redirect Internet users to a search engine website that contains pop-up ads and provides links to various commercial websites, some of which belong to Complainant’s competitors.  Respondent’s use of a domain name confusingly similar to Complainant’s METLIFE mark to redirect Internet users interested in Complainant’s products to a search engine displaying links to commercial websites that offer identical insurance and financial related services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of a website using a domain name which is confusingly similar to the Complainant’s mark and for the same business”; see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) finding that Respondent’s operation of a website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services; see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services.

Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <metlifeeservice.com> domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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; see also 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.

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

Registration and Use in Bad Faith

Respondent uses the <metlifeeservice.com> domain name to redirect Internet users to a search engine containing pop-up ads and links to websites belonging to Complainant’s competitors.  Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See 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 Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain; see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site.

Respondent has a history of registering famous marks in domain names for a commercial benefit and has been ordered to transfer other domain names under the Policy in previous actions.  See InfoSpace, Inc. v. Horoshiy, Inc., FA282775  (Nat. Arb. Forum July 23, 2004); see also Citigroup Inc. v. Horoshiy, Inc., FA290633 (Nat. Arb. Forum Aug. 11, 2004), see also Avery Dennison Corp. v. Horoshiy, Inc., FA289048 (Nat. Arb. Forum Aug. 2, 2004).  Respondent’s history of registering domain names that incorporates registered marks evidences bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith; see also Time Warner Inc. & EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) finding that Respondent registered and used the domain names emiwarnermusic.com, emiwarner.org, emiwarner.net, warneremi.net and warneremi.org in bad faith when Respondent registered the domain names immediately after an announced merger between Time Warner Inc. and EMI Group. Respondent had also registered 15 other domain names belonging to Complainant, evidencing a pattern of preventative conduct; see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) finding that Respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii).

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 <metlifeeservice.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  October 25, 2004

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