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Generic Top Level Domain Name (gTLD) Decisions |
Metropolitan Life Insurance Company v.
India Domain Law and Research Group a/k/a Keshav Dass, Rajesh Sharma
Claim
Number: FA0411000370700
Complainant is Metropolitan Life Insurance Company (“Complainant”),
represented by Leon Medzhibovsky of Fulbright & Jaworski,
666 Fifth Avenue, New York, NY 10103. Respondent is India Domain Law and Research Group a/k/a Keshav Dass, Rajesh
Sharma (“Respondent”), Kalian, P.O. Bhilowal, Hoshiarpur, Punjab 146104,
India.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <metlifeppo.com> and <metlifehealthinsurance.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically November
22, 2004; the National Arbitration Forum
received a hard copy of the Complaint November
23, 2004.
On
November 23, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the National Arbitration Forum that the domain
names <metlifeppo.com>
and <metlifehealthinsurance.com> are registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of
the names. Iholdings.com,
Inc. d/b/a Dotregistrar.com verified that Respondent
is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration
agreement
and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute
Resolution
Policy (the "Policy").
On
November 24, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 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@metlifeppo.com and
postmaster@metlifehealthinsurance.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 23, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
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:
1. The domain names that Respondent
registered, <metlifeppo.com> and <metlifehealthinsurance.com>,
are confusingly similar to Complainant’s METLIFE mark.
2. Respondent has no rights to or legitimate
interests in the <metlifeppo.com> and <metlifehealthinsurance.com>
domain names.
3. Respondent registered and used the <metlifeppo.com>
and <metlifehealthinsurance.com> domain names in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant, a
provider of insurance and related services for over 135 years, is the owner of
many worldwide trademark registrations
for the METLIFE mark, including a
registration on file at the United States Patent and Trademark Office (Reg. No.
1,541,862, issued
May 30, 1989). Complainant’s METLIFE mark is essentially an
abbreviation of Complainant’s full company name, Metropolitan Life Insurance
Company. The mark has acquired substantial goodwill and is a valuable
commercial asset. Complainant operates a website at the <metlife.com>
domain name. The terms “PPO” and “health insurance” are descriptive of services
that Complainant provides.
Respondent
registered the <metlifeppo.com> and <metlifehealthinsurance.com>
domain names October 20, 2004. The disputed domain names resolve to websites
that contain sponsored links to various commercial
websites. Some of the links
direct Internet users to websites of Complainant’s direct competitors.
Respondent is not a licensee of
Complainant and is not authorized to use
Complainant’s mark for any purpose.
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
will draw such inferences as the Panel considers
appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established by extrinsic proof in this proceeding that it has rights in the
METLIFE mark through registration with the
United States Patent and Trademark
Office and through continuous use of the mark in commerce. 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 <metlifeppo.com>
and <metlifehealthinsurance.com> domain names are confusingly
similar to Complainant’s METLIFE registered trademark because the disputed
domain names fully incorporate
the mark while merely adding the generic terms
“PPO” and “health insurance,” which are also descriptive of services that
Complainant
offers, and the “.com” generic top-level domain. Neither the
addition of generic or descriptive terms nor the addition of a generic
top-level domain distinguishes the disputed domain names from Complainant’s
mark. See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant); see also 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); 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.
Complainant
established that it has legal and common law rights to the mark contained in
its entirety in the disputed domain names.
Respondent did not submit a Response
in this proceeding. Therefore, Complainant’s submission has gone unopposed and
its arguments
unrefuted. In the absence of a Response, the Panel accepts as
true all reasonable allegations contained in the Complaint unless clearly
contradicted by the evidence. Because Respondent has failed to submit a
Response, it has failed to propose any set of circumstances
that could
substantiate its rights or legitimate interests in the disputed domain names. See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which
could demonstrate any rights or legitimate interests in the
domain name); 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 the Complaint to be deemed true).
Respondent
is not using the disputed domain names in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i)
and is not making a legitimate
noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).
The record reveals that
the disputed domain names redirect unsuspecting
Internet users to websites that provide links to services that are in
competition
with Complainant’s insurance services. The Panel infers that
Respondent commercially benefits from this diversion by receiving pay-per-click
fees from advertisers when Internet users follow the links on its websites.
Respondent makes opportunistic use of Complainant’s mark
in order to capitalize
on the goodwill and fame associated with the METLIFE mark; thus, Respondent
fails to establish rights or legitimate
interests in the domain names. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally
and misleadingly diverting users away from
Complainant's site to a competing website); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation
of [a] web-site using a domain
name which is confusingly similar to the Complainant’s mark and for the same
business”).
No
evidence before the Panel suggests Respondent is commonly known by the domain
names under Policy ¶ 4(c)(ii). Respondent’s WHOIS
information indicates that the
registrant of the disputed domain names is known as “India Domain Law and
Research Group a/k/a Keshav
Dassi” and is not known by either of the confusing
second-level domains that infringe on Complainant’s METLIFE mark. Moreover,
Respondent
is not authorized or licensed to use Complainant’s mark for any
purpose. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly
known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also 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").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith.
Respondent has not controverted that allegation. Respondent is using confusingly similar
variations of Complainant’s famous METLIFE mark within the <metlifeppo.com>
and <metlifehealthinsurance.com> domain names to ensnare
unsuspecting Internet users. Respondent then redirects the users to its
websites, which offer links to
competing services. The Panel infers that
Respondent commercially benefits from this diversion by receiving pay-per-click
fees from
advertisers when Internet users follow the links on its websites.
Such infringement is what the Policy was intended to remedy. Thus,
the Panel
finds Respondent registered and used the domain names in bad faith under Policy
¶ 4(b)(iv). See AutoNation Holding Corp. v. Alawneh, D2002-0581 (WIPO
May 2, 2002) (“The scope of an ICANN proceeding is extremely narrow: it only
targets abusive cybersquatting, nothing
else”); 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 and used domain names that are confusingly similar to Complainant’s
mark for the purpose of directing Internet
users to businesses that offer
services that compete with Complainant’s services. Respondent’s use of the <metlifeppo.com>
and <metlifehealthinsurance.com> domain names establishes that
Respondent registered the domain names for the purpose of disrupting the
business of a competitor
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see
also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant's marks suggests
that Respondent,
Complainant’s competitor, registered the names primarily for
the purpose of disrupting Complainant's business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation
of
Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of the domain names, additional
factors can also be used to support findings of bad faith. 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) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Respondent’s
registration of the disputed domain names, which incorporate Complainant’s
well-known registered mark and simply add
generic and descriptive terms,
suggests that Respondent knew of Complainant’s rights in the METLIFE mark.
Additionally, Complainant’s
trademark registration, on file at the United
States Patent and Trademark Office, gave Respondent constructive notice of
Complainant’s
mark. Thus, the Panel finds that Respondent chose the <metlifeppo.com>
and <metlifehealthinsurance.com> domain names based on the
distinctive and well-known qualities of Complainant’s mark, which evidences bad
faith registration
and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or
registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make
any active use of the
disputed domain names without creating a false impression of association with
the Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous
mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the
domain names); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(determining that Policy paragraph 4(b) sets forth certain circumstances,
without limitation,
that shall be evidence of registration and use of a domain
name in bad faith); see also 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 Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status
that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
The Panel finds
that Policy ¶ 4(a)(iii) has been 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 <metlifeppo.com> and <metlifehealthinsurance.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 6, 2005
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