The Complainant is Metropolitan Life Insurance Company of New York, New York, United States of America, represented by CSC Digital Brand Services (“CSC DBS”), United States of America (“U.S.”).
The Respondent is Registrant [4251273]: Taranga Services Pty Ltd / Domain Admin of Wellington, New Zealand. 2. The Domain Names and Registrars
The disputed domain name is registered with Moniker Online Services, LLC. The disputed domain name is registered with R Corp. Both disputed domain names shall be referred to as the Disputed Domain Names hereinafter. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2013. On June 7, 2013, the Center transmitted by email to Moniker Online Services, LLC and R Corp. (the “Registrars”) a request for registrar verification in connection with the Disputed Domain Names. On June 10 and 12, 2013, the Registrars transmitted respectively by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 12, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2013.
The Center appointed Andrea Mondini as the sole panelist in this matter on July 11, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On July 24, 2013, the Panel requested the Center to inform the parties that the decision due date had been extended to August 5, 2013. 4. Factual Background
The Complainant is Metropolitan Life Insurance Company, a major provider of insurance, annuities and employee benefit programs. In the U.S., the Complainant inter alia owns the following registered trademarks:
- METLIFE [U.S. Registration No. 1,541,862], registered May 30, 1989;
- METLIFE AAA [U.S. Registration No. 1,415,273], registered October 28, 1986;
- METLIFE ADVICE [U.S. Registration No. 2,811,849], registered February 3, 2004;
- METLIFE BANK [U.S. Registration No. 2,814,241] registered February 10, 2004 and [U.S. Registration No. 2,599,438], registered July 23, 2002;
- METLIFE EDELIVERY [U.S. Registration No. 2,773,671], registered October 14, 2003;
- METLIFE EXECUTIVECARE [U.S. Registration No. 3,017,972], registered November 22, 2005;
- METLIFE FINANCIAL SERVICES [U.S. Registration No. 2,791,583], registered December 9, 2003;
- METLIFE INVESTORS [U.S. Registration No. 2,675,650], registered January 14, 2003;
- METLIFE RETIREMENT INCOME INSURANCE [U.S. Registration No. 2,995,175], registered September 13, 2005;
- 4-M service mark (design logo) [U.S. Registration No. 842,613], registered January 16, 1968.
The Disputed Domain Name was registered on December 6, 2006 and the Disputed Domain Name was registered on January 12, 2007.
As the Respondent did not file a response, no further information is known about the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends:
- that the METLIFE mark is famous throughout the world for the goods and services the mark represents;
- that the Complainant has used the METLIFE mark in commerce continuously since at least as early as 1968 for an ever-increasing range of goods and services;
- that in 1994 it registered the domain name;
- that its long-term, prominent usage of its famous METLIFE mark has generated extensive fame and goodwill and widespread consumer recognition for the mark as identifying exclusively the Complainant and the Complainant’s products;
- that the Complainant is a leader in the insurance, annuities, pension fund, non-medical health and property and casualty insurance as well as savings and retirement products and services for individuals, small businesses and large institutions;
- that in addition, the Complainant is also a leader in residential and commercial mortgage, lending, real estate brokerage and management services. The Complainant is the largest life insurer in terms of life insurance “in-force” in North America, and offers financial products and services to 88 of the Fortune 100 companies;
- that it serves approximately 37 million employees and family members through their plan sponsors, and is ranked No. 36 on the Fortune 500 list and No. 194 on the FT Global 500 list;
- that the METLIFE mark has become a famous and distinctive mark throughout the world, as has been held by courts and arbitral tribunals in the U.S.;
- that the METLIFE marks constitute prima facie evidence of their validity and conclusive evidence of the Complainant’s exclusive right to use the METLIFE marks in commerce in connection with the goods named therein, and commercially related goods;
- that the Disputed Domain Names are confusingly similar to the Complainant's registered METLIFE trademarks because the METLIFE mark is the distinctive element in the Disputed Domain Names, whereas the rest of the words are generic terms;
- that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, since inter alia there is no relationship between the Complainant and the Respondent that would give rise to any license or other right to use the Disputed Domain Names;
- that Respondent registered and is using the Disputed Domain Names in bad faith because according to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), panels have generally recognized that use of a domain name to post parking and landing pages or pay per click (PPC) links generally qualifies as unfair use resulting in misleading diversion, where such links are based on trademark value. B. Respondent
The Respondent did not respond to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following to have the Disputed Domain Names transferred to it:
(i) that the Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has shown that it holds rights in the word mark METLIFE and several word marks that contain the word METLIFE in the U.S. The Complainant has also shown that the registration of these trademarks predates the registration of both Disputed Domain Names.
Both of the Disputed Domain Names incorporate the METLIFE trademark. In the Disputed Domain Name the word “com” is added to the trademark, whereas in the Disputed Domain Name the word “dentist” is added. In both Disputed Domain Names, the METLIFE mark is the distinctive element, whereas the words “com” and “dentist” are generic terms. The adding of generic terms to the Complainant’s trademark does not diminish the likelihood of confusion (Sutton Group Financial Services Ltd. And Sutton Group Realty Services, Inc. v. Bill Rodger,WIPO Case No. D2005-0126). On the contrary, the likelihood of confusion can rather be considered as aggravated because the terms are descriptive of the goods or services marketed by the Complainant in relation to its trademarks (“dentist” for dental insurance and “com” for online computer services; see Sutton Group Financial Services Ltd. And Sutton Group Realty Services, Inc. v. Bill Rodger, supra, and Sodexho Alliance v. Entredomains, Inc.,WIPO Case No. D2002-1001.
The Panel thus finds that the Complainant established that both of the Disputed Domain Names are confusingly similar to the Complainant’s trademark METLIFE. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the respondent. Therefore, the common view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name. However, the complainant has to make a prima facie showing indicating the absence of such rights or interests. See, e.g. Document Technologies Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant made a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. In particular, the Complainant has shown that the Respondent has no obvious connection with the Disputed Domain Names and that there exists no relationship between the parties that would give rise to any license, permission, or authorization by which the Respondent could own or use the Disputed Domain Names. In Addition, as was held in Nike Inc. v. B.B. de Boer,WIPO Case No. D2000-1397, it is difficult to see how the Respondent could not have known about the trademark METLIFE and it is very unlikely that the Respondent is commonly known as Metlifecom or Metlifedentist.
The Respondent had the opportunity to demonstrate that it has any rights or legitimate interests in the Disputed Domain Names, but it failed to do so. Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith. Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including (iv) where a domain name is “used to deliberately attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location” or (iii) where a domain name is registered “primarily for the purpose of disrupting the business of a competitor”.
It does not per se constitute bad faith if a domain name is used to post parking and landing pages or PPC links. However, if such domain name is obviously exploiting the goodwill associated with the complainant’s mark, this may generally be considered to be unfair use resulting in misleading diversion. In Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708, the panel decided that the fact that the website provided multiple links to goods and services relating to the complainant’s trademark indicated that the respondent knowingly used the complainant’s trademark and evidenced that the respondent unfairly and opportunistically benefited from the goodwill associated with the complainant’s mark. In Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, the panel found that bad faith exists where a domain name is so obviously connected with the complainant that its very use by someone with no connection with the complainant suggests opportunistic bad faith. Also, the two cases Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 and Advance Magazine Publishers Inc. v. Pablo Palermao,WIPO Case No. D2008-0026 confirm that bad faith is evidenced where a respondent uses virtually the same mark as a domain name and where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights.
In the present case, the Respondent uses two Disputed Domain Names which are confusingly similar to the Complainant’s well-known METLIFE marks. The site at the Disputed Domain Name shows results for “insurance”, which is the Complainant’s main business, and “dentist”, whereby dental insurance is also part of the Complainant’s services. The site at the Disputed Domain Name also used to show such results. These facts in the view of the Panel indicate that the Respondent knowingly used the Complainant’s trademark and is evidence that the Respondent is unfairly and opportunistically benefiting from the goodwill associated with the Complainant’s mark. In addition, the Disputed Domain Names and are not domain names any user would choose unless it knew of the trademarks of the Complainant, since “metlife” is a fantasy word (see also DCI S.A. v. Link Commercial Corporation,WIPO Case No. D2000-1232).
Accordingly, the Panel finds that both of the Disputed Domain Names were registered and are being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names and be transferred to the Complainant.
Andrea Mondini
Sole Panelist
Date: July 30, 2013
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