The Complainant is Metropolitan Life Insurance Company of New York, United States of America, represented by Sullivan & Worcester LLP, United States of America.
The Respondent is Ramon Aguirre of Caracas, Distrito Capital, the Bolivarian Republic of Venezuela. 2. The Domain Name and Registrar
The disputed domain name is registered with the National Commission of Telecommunications of the Bolivarian Republic of Venezuela (in Spanish CONATEL). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2010. On July 9, 2010, the Center transmitted by email to CONATEL a request for registrar verification in connection with the disputed domain name. On July 19, 2010, CONATEL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. CONATEL also confirmed that the language of the Registration Agreement for the domain name was Spanish. The Center verified that the 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”).
On July 22, 2010, the Center sent an email communication to the parties in relation to the language of the proceedings. On July 23, 2010, the Complainant sent a request that English be the language of the proceedings. The Respondent did not submit any comments relating to this matter.
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 July 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2010.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on August 24, 2010. 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. 3. bis. Language of the Proceedings
Pursuant to paragraph 11 of the Rules, and considering that the Complaint has been filed in English, together with much of the evidence attached thereto, that all of the Center’s communications to the parties have been transmitted in both English and Spanish, and that no Response was filed by the Respondent, this Panel decides to continue these proceedings in English. See Fisster GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002. 4. Factual Background
The Complainant is the owner, amongst others, of the following trademark registrations:
TRADEMARK REG. No. Class(Int’l) COUNTRY
METLIFE
1541862
36 and 42
United States
METLIFE AAA
1415273
36
United States
METLIFE ADVICE
2811849
36
United States
METLIFE BANK
2814241
09
United States
METLIFE BANK
2599438
36
United States
METLIFE EDELIVERY
2773671
38
United States
METLIFE EXECUTIVECARE
3017972
36
United States
METLIFE FINANCIAL SERVICES
2791583
36
United States
METLIFE INVESTORS
2675650
36
United States
METLIFE RETIREMENT INCOME INSURANCE
2995175
36
United States
4-M SERVICE MARK
842613
36
United States
The disputed domain name was registered on January 19, 2007. 5. Parties’ Contentions A. Complainant
That Complainant’s trademark METLIFE is internationally famous for the goods covered by it.
That Complainant has used the METLIFE trademark in commerce continuously since at least as early as 1968.
That Complainant has expended hundreds of millions of dollars to advertise and market its products and services, resulting in sales of billions of dollars worth of services under the METLIFE trademark.
That Complainant registered the domain name in November, 1994.
That Complainant’s long-term, prominent usage of its famous METLIFE trademark has generated extensive fame and goodwill and widespread consumer recognition for its trademark as identifying exclusively Complainant and Complainant’s products.
That Complainant’s METLIFE trademark has become a famous and distinctive trademark throughout the world.
That Complainant, in late March 2010, conducted a WhoIs search to determinate the registrant of the disputed domain name and obtained that the registrant was Mr. Ramon Aguirre. Identical or Confusingly Similar
That the disputed domain name is confusingly similar to the Complainant’s METLIFE trademark, because it reproduces the Complainant’s trademark with the addition of the ccTLD “.ve”, and the gTLD “.com.”
That panels have consistently concluded that the addition of a geographical term to a complainant’s trademark does not preclude a finding of confusing similarity.
That the Complainant’s trademark is famous in and does significant business throughout Latin America.
That the Respondent’s tagging-on of the suffix “.ve” to the famous METLIFE trademark does not preclude a finding of confusing similarity. Rights or Legitimate Interests
That the Complainant’s trademarks are so well-known and widely-recognized throughout the world, that there cannot be a legitimate use by the Respondent.
That the Complainant began doing business in Latin America in 1992 under the METLIFE trademark.
That the Complainant registered the METLIFE trademark in the United States, as well as registered the domain name.
That the Respondent did not register the disputed domain name until 2009.
That there is not any chance that the Respondent was unaware of the famous Complainant’s trademark prior to registering the disputed domain name in 2009.
That since the Respondent has no connections with the disputed domain name and the website is currently inactive, the Complainant has met its burden of proving the Respondent has no rights or legitimate interest in the disputed domain name.
That there is no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the disputed domain name. Registered and Used in Bad Faith
That the Respondent’s actions prove bad faith in registering and using the disputed domain name because panels have repeatedly held that “merely holding and infringing domain name without an active use“ can constitute use in bad faith.
That the Complainant presumes the Respondent intends to prevent the Complainant from registering a corresponding domain name or to attempt to sell the disputed domain name to the Complainant.
That the Respondent has demonstrated its bad faith by its refusal to respond to the Complainant’s cease and desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:
(i) The domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these elements are present.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Complainant is the holder of several trademark registrations for METLIFE in the United States.
This Panel admits the uncontested affirmations made by the Complainant, regarding the widespread publicity, fame and recognition of the trademark METLIFE.
The disputed domain name is confusingly similar to the Complainant’s trademark METLIFE.
Said trademark METLIFE is entirely incorporated in the disputed domain name . The addition of the generic top-level domain “.com” and the suffix “.ve” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel generally does not take into account the generic top-level domain (gTLD) “.com” and “.ve”, because such TLDs have no legal significance. See Ahmanson Land Company v. Vince Curtis,WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).
Therefore this Panel finds that the domain name is confusingly similar to the Complainant’s trademark. The first requirement of the Policy has been fulfilled. B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Respondent has not submitted evidence showing his preparations to use the disputed domain name with a bona fide offering of goods or services, nor has the Respondent proven that he has been commonly known as , or that he is making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has not contested the Complainant’s statements and evidence.
Panels acting under the Policy have held that in certain circumstances registration of a domain name incorporating another’s well-known mark does not confer any rights or legitimate interests in the domain name to the respondent, but rather indicates bad faith under the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Medisite S.A.R.L. v. Intellisolve Limited,WIPO Case No. D2000-0179 and V&S Vin & Sprit Aktiebolag v. Kownacki, NAF Claim No. 95079).
Therefore, this Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name . The second requirement of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Registration of a well-known or famous trademark may constitute bad faith for purposes of paragraph 4(b) of the Policy (see, mutatis mutandis, Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330; Inter-IKEA Systems B.V v. Technology Education Center,WIPO Case No. D2000-0522; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489).
A considerable number of panels have recognized that paragraph 4(b) of the Policy sets forth examples of bad faith conduct, but that there are other cases in which bad faith may be found (see, for example, Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131; Expedia, Inc. v. Miles Pennella,WIPO Case No. D2001-1416), and that other circumstances may constitute evidence showing that the domain name has been registered and is being used in bad faith (Telstra v. Nuclear Marshmallows, supra).
Other panels have established that passive holding may be sufficient to find bad faith use of a domain name.(Real Madrid Club De Futbol v. Lander W.C.S.,WIPO Case No. D2000-1805–citing in turn Telstra, supra; J. García Carrión, S.A. v. Mª José Catalán Frías,WIPO Case No. D2000-0239; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464; and Montes De Piedad Y Cajas De Ahorro De Ronda, Cádiz, Málaga, Almería Y Antequera (Unicaja) v. Fernando Labadia Pardo,WIPO Case No. D2000-1402).
The following are some circumstances that support a passive holding finding:
(i) The trademark METLIFE is highly distinctive internationally. The Complainant has argued that said trademark is well-known and famous, which argument has not been contested by the Respondent. (see Encyclopaedia Britannica, supra). According to the information and evidence submitted by the Complainant, the trademark METLIFE has a solid presence in Latin America and globally, due to advertising and operations in the insurance and financial fields.
(ii) The Respondent has not submitted evidence showing rights or legitimate interests in the disputed domain name.
(iii) The Respondent has not explained why he chose a domain name that entirely reproduces a well-known trademark such as METLIFE, given that the record contains no evidence showing any relationship between the Respondent and the owner of the METLIFE trademark.
(iv) The Responent is not commonly known as . In fact, it is the Complainant which is commonly known as METLIFE.
(v) The widespread advertising of the trademark METLIFE, and the Complainant’s commercial presence globally, make the disputed domain name very closely related to said trademark METLIFE and its owner, the Complainant (see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (finding bad faith when a domain name is so evidently connected to a highly known product, that its mere use by any person not related with said product becomes opportunistic bad faith).
(vi) As a conclusion, it is difficult to think of a use of the disputed domain name, on the side of the Respondent, that is not illegitimate, such as confusion or deceit.
This Panel finds that the domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Dated: September 7, 2010
Full & Egal Universal Law Academy