DECISION

Metropolitan Life Insurance Company v. Registrant info@fashionid.com +1.25255572

Claim Number:  FA0408000314277

PARTIES

Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Leon Medzhibovsky of Fulbright & Jaworski, 666 Fifth Avenue, New York, NY 10103.  Respondent is Registrant info@fashionid.com +1.25255572 (“Respondent”), P.O. Box No. 71826, KCPO, Hong Kong, Hong Kong 852.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <metlifedental.com>, registered with Onlinenic, 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 August 18, 2004; the Forum received a hard copy of the Complaint on August 19, 2004.

On August 19, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <metlifedental.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 August 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 14, 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@metlifedental.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 27, 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 <metlifedental.com> domain name is confusingly similar to Complainant’s METLIFE mark.

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

3. Respondent registered and used the <metlifedental.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 and financial products and services, including life, non-medical health and property and caualty insurance, as well as savings and retirement products and services for individuals and small and large businesses and institutions.  Complainant has been providing these services for over 135 years. 

Complainant is the owner of numerous trademark registrations throughout the world and with the United States Patent and Trademark Office for marks incorporating the MET (Reg. No. 1,530,051 issued March 14, 1989) and METLIFE (Reg. No. 1,541,862 issued May 30, 1989) marks.  These marks are abbreviations for Complainant’s full company name.  

Complainant offers financial products and services to eighty-eight of the Fortune 100 companies.  Additionally, Complainant serves approximately thirteen million households in the United States and provides benefits to aproximately thirty-seven million employees and family members.  Complainant also has direct international operations in ten countries serving about eight million customers and major operations, affiliates, and representative offices throughout the Americas, Europe and Asia. 

Complainant owns domain name registrations for numerous domain names containing the MET and METLIFE marks, including the <metlife.com> and <metdental.com> domain names.  The <metdental.com> domain name links Complainant’s clients to the “MetDental” online benefits program where the clients can manage their dental benefits. 

Respondent registered the <metlifedental.com> domain name on March 5, 2002.  Respondent is using the disputed domain name to redirect Internet users to a website located at the <landing.domainsponsor.com> subdomain name, which features a search engine and links to various business, including direct competitors of Complainant’s business and businesses unrelated to Complainant’s products and services.    

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 States Patent and Trademark Office and by continuous use of its mark in commerce for at least 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 <metlifedental.com> domain name registered by Respondent is confusingly similar to Complainant’s METLIFE mark because the domain name incorporates Complainant’s mark in its entirety, adding only the genric or descriptive term “dental.”  Furthermore, the term “dental” is directly related to services offered by Complainant.  The mere addition of a generic or descriptive word to Complainant’s registered mark does not negate the confusing similarity of the disputed 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 AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights; 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.

Furthermore, the addition of the generic top-level domain (gTLD) “.com” does not distinguish the domain name in determining confusing similarity to Complainant’s METLIFE mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

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 <metlifedental.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 <metlifedental.com> domain name to redirect Internet users to a search engine located at the <landing.domainsponsor.com> subdomain name, which features links to numerous commercial websites, including those of Complainant’s competitors and websites unrelated to Complainant’s business.  Respondent’s use of a domain name confusingly similar to Complainant’s METLIFE mark to divert Internet users seeking Complainant’s products and services to a website displaying links to Complainant’s competitors and unrelated websites for the purpose of receiving a referral fee 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy; see also 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.

Finally, Respondent offered no evidence, and no proof in the record suggests, that Respondent is commonly known by the <metlifedental.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 <metlifedental.com> domain name, containing Complainant’s METLIFE mark in its entirety, for Respondent’s commercial gain.  The disputed domain name diverts Internet users who seek Complainant’s products and services to an unrelated 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 H-D Michigan, Inc. v. Petersons Auto. , FA 135608 (Nat. Arb. Forum Jan. 8, 2003) finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness; see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent; see also 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.

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, is evidence of bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith registration and use.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

Respondent’s registration of the <metlifedental.com> domain name, incorporating Complainant’s well-known registered METLIFE mark in its entirety, adding only the generic or descriptive word “dental,” suggests that Respondent knew of Complainant’s rights in the METLIFE mark.  Furthermore, the generic or descriptive term “dental” in the domain name is obviously related to Complainant’s business.  Thus, the Panel finds that Respondent chose the disputed domain name based on the distinctive and well-known qualities of Complainant’s mark.  Registration of a domain name that incorporates another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration; see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted 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 <metlifedental.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  October 11, 2004

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