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Generic Top Level Domain Name (gTLD) Decisions |
Metropolitan Life Insurance Company v.
Netsolutions proxy services
Claim
Number: FA0412000381135
Complainant is Metropolitan Life Insurance Company (“Complainant”),
represented by Leon Medzhibovsky, of Fulbright & Jaworski,
666 Fifth Avenue, New York, NY 10103. Respondent is Netsolutions proxy services (“Respondent”), p.o box: 9948, Tsuen
Wan, Hong Kong 00000, China.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <metlifeinsurnace.com>, <metlifeinsurancecompany.com>,
and <metlifefinancialservices.com>, registered with Fabulous.com
Pty Ltd.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
13, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on December 14, 2004.
On
December 16, 2004, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain names <metlifeinsurnace.com>, <metlifeinsurancecompany.com>,
and <metlifefinancialservices.com> are registered with Fabulous.com
Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com
Pty Ltd. has verified
that Respondent is bound by the Fabulous.com Pty 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 17, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 6, 2005 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@metlifeinsurnace.com,
postmaster@metlifeinsurancecompany.com, and
postmaster@metlifefinancialservices.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
January 12, 2004, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed John J.
Upchurch 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:
1. Respondent’s <metlifeinsurnace.com>
and <metlifeinsurancecompany.com> domain names are confusingly
similar to Complainant’s METLIFE mark. Respondent’s <metlifefinancialservices.com>
domain name is identical to Complainant’s METLIFE FINANCIAL SERVICES mark.
2. Respondent does not have any rights or
legitimate interests in the <metlifeinsurnace.com>, <metlifeinsurancecompany.com>,
and <metlifefinancialservices.com> domain names.
3. Respondent registered and used the <metlifeinsurnace.com>,
<metlifeinsurancecompany.com>, and <metlifefinancialservices.com>
domain names in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant has
been a provider of insurance and related services for over 135 years.
Complainant holds many worldwide trademark registrations
that incorporate the
METLIFE mark, including Reg. Nos. 1,541,862 for METLIFE and 2,791,583 for
METLIFE FINANCIAL SERVICES (issued
May 30, 1989 and December 9, 2003,
respectively), which are on file at the United States Patent and Trademark
Office. Complainant
has used the METLIFE and METLIFE FINANCIAL SERVICES marks
in commerce continuously since at least 1968 and 1999, respectively. The
marks
have acquired substantial goodwill and are valuable commercial assets.
Complainant’s METLIFE mark is essentially an abbreviation
of Complainant’s full
company name, Metropolitan Life Insurance Company. Complainant also operates a
website at the <metlife.com>
domain name. The terms “insurance” and
“company” are descriptive of Complainant or of services that it offers.
Respondent
registered the <metlifeinsurnace.com>, <metlifeinsurancecompany.com>,
and <metlifefinancialservices.com> domain names on September 1,
2004, November 2, 2004, and October 13, 2004, respectively. 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. Internet users are also subjected to numerous pop-up
advertisements when visiting Respondent’s websites. Respondent
is not a
licensee of Complainant and is not authorized to use Complainant’s marks 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
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.
Complainant
established by extrinsic proof in this proceeding that it has rights in the
METLIFE and METLIFE FINANCIAL SERVICES marks
through registration with the
United States Patent and Trademark Office and through continuous use of the
marks in commerce since
1968 and 1999, respectively. 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 <metlifeinsurnace.com>
and <metlifeinsurancecompany.com> domain names are confusingly
similar to Complainant’s METLIFE registered trademark. The domain names fully
incorporate the mark
while merely adding either a misspelling of the generic
term “insurance” or the generic terms “insurance” and “company,” which are
descriptive of Complainant or of services that it offers, and the “.com”
generic top-level domain. Neither the addition of generic
and descriptive terms
nor the addition of generic top-level domains distinguishes the <metlifeinsurnace.com>
and <metlifeinsurancecompany.com> domain names from Complainant’s
METLIFE 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); see also Bank of Am. Corp. v. Chen Huang, FA 296592 (Nat.
Arb. Forum Sept. 2, 2004) (finding that the <nationsmorgage.com> domain
name, which adds a misspelling of
the generic word “mortgage” to the
complainant’s NATIONS mark, is confusingly similar to the mark).
The
<metlifefinancialservices.com> domain name is identical to
Complainant’s METLIFE FINANCIAL SERVICES registered trademark. The domain name
fully incorporates
the mark while merely removing spaces from the mark and
adding the “.com” generic top-level domain. Removing spaces from the mark
and
adding a generic top-level domain do not distinguish the <metlifefinancialservices.com>
domain name from Complainant’s METLIFE FINANCIAL SERVICES mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible
in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”); see also Planned Parenthood Fed’n of Am. v. Bucci,
42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), aff’d 152 F.3d 920 (2d Cir. 1998), cert.
denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and
defendant’s <plannedparenthood.com> domain name nearly identical).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
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 <metlifeinsurnace.com>,
<metlifeinsurancecompany.com>, and <metlifefinancialservices.com>
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 <metlifeinsurnace.com>, <metlifeinsurancecompany.com>,
and <metlifefinancialservices.com> domain names redirect unsuspecting
Internet users to websites that provide links to other commercial websites,
including websites
that offer 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.
Moreover, Internet users
visiting Respondent’s websites are subjected to pop-up advertisements.
Respondent makes opportunistic use
of Complainant’s marks in order to
capitalize on the goodwill and fame associated with the METLIFE and METLIFE
FINANCIAL SERVICES
marks; 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 that 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.”); see also Wells Fargo & Co. v. Party Night Inc., FA
144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s
use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to
divert Internet users to websites featuring
pop-up advertisements 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).
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 “Netsolutions proxy
services” and is not known
by any of the confusing second-level domains that
infringe on Complainant’s METLIFE and METLIFE FINANCIAL SERVICES marks. Moreover,
Respondent is not authorized or licensed to use Complainant’s marks 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”); 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.
Respondent
is using confusingly similar or identical variations of Complainant’s METLIFE
or METLIFE FINANCIAL SERVICES marks within
the <metlifeinsurnace.com>,
<metlifeinsurancecompany.com>, and <metlifefinancialservices.com>
domain names to ensnare unsuspecting Internet users. Respondent then redirects
the users to its websites, which offer sponsored links
to various commercial
websites. 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 that Respondent registered and used
the domain names in bad faith under 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 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 or identical to
Complainant’s marks for the purpose of directing
Internet users to businesses
that offer services that compete with Complainant’s services. Respondent’s use
of the <metlifeinsurnace.com>, <metlifeinsurancecompany.com>,
and <metlifefinancialservices.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 are confusingly similar or
identical to well-known marks in which Complainant
has rights, suggests that
Respondent knew of Complainant’s rights in the METLIFE and METLIFE FINANCIAL
SERVICES marks. Additionally,
Complainant’s trademark registrations, on file at
the United States Patent and Trademark Office, gave Respondent constructive
notice
of Complainant’s marks. Moreover, Respondent’s knowledge of
Complainant’s rights in the marks is evidenced by the fact that its websites
provide links to Complainant’s competitors. Thus, the Panel finds that
Respondent chose the <metlifeinsurnace.com>, <metlifeinsurancecompany.com>,
and <metlifefinancialservices.com> domain names based on the
distinctive and well-known qualities of Complainant’s marks, 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 <metlifeinsurnace.com>, <metlifeinsurancecompany.com>,
and <metlifefinancialservices.com> domain names be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: January 26, 2005
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