DECISION

Metropolitan Life Insurance Company v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0410000338340

PARTIES

Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Leon Medzhibovsky, of Fulbright & Jaworski, 666 Fifth Avenue, New York, NY 10103.  Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg, Curacao, AN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <metwins.com>, registered with Nameking.com, 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 September 30, 2004; the Forum received a hard copy of the Complaint on October 1, 2004.

On October 1, 2004, Nameking.com, Inc. confirmed by e-mail to the Forum that the domain name <metwins.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 October 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 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@metwins.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 November 2, 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 <metwins.com> domain name is confusingly similar to Complainant’s METLIFE and MET marks.

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

3. Respondent registered and used the <metwins.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Since 1863, Complainant Metropolitan Life Insurance Company has been known by the METLIFE mark.  Complainant has used the mark in commerce in connection with its business of providing insurance and related services such as savings and retirement products and services for individuals, small businesses and large institutions.  Complainant owns trademark registration rights for the METLIFE and MET marks through registration with the United States Patent and Trademark Office (e.g., Reg. No. 1,530,051, issued March 14, 1989).  Complainant also owns other U.S. trademark registrations for marks comprising the MET mark together with some other term, such as METNET, METLAW and MET PAY.  METLIFE and MET are abbreviations of Complainant’s full company name, Metropolitan Life Insurance Company. 

Complainant developed a software program called MetWins to help Complainant’s agents and brokers create personalized insurance proposals for various products and was first used in commerce on September 9, 1998.

Respondent registered the <metwins.com> domain name on March 23, 2004.  Respondent’s <metwins.com> domain name resolves to a search engine that provides links to various commercial websites, including those belonging to Complainant’s competitors.  Respondent’s website also displays Complainant’s METLIFE mark along with links to websites that are unrelated to Complainant’s business and pop-up advertisements.  

Respondent has been involved with several Internet domain name disputes prior to the institution of this action by Complainant.  See InfoSpace, Inc. v. Horoshiy, Inc., FA 282775 (Nat. Arb. Forum July 23, 2004); see also Avery Dennison v. Horoshiy, Inc., FA 289048 (Nat. Arb. Forum Aug. 2, 2004); see also Citigroup, Inc. v. Horoshiy, Inc., FA 290663 (Nat. Arb. Forum Aug. 11, 2004).

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 that it has rights in the METLIFE and MET marks through registration with the United States Patent and Trademark Office.  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..

Respondent’s <metwins.com> domain name is confusingly similar to Complainant’s METLIFE and MET marks because the domain name incorporates Complainant’s met mark with the addition of the generic or descriptive word “wins”.  Moreover, Complainant developed a software program entitled MetWins to help Complainant’s agents and brokers with insurance proposals.  The addition of a generic or descriptive term that describes Complainant’s business does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See 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 Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark; see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant contends Respondent does not have rights or legitimate interests in the <metwins.com> domain name containing Complainant’s MET mark.  The Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name due to Respondent’s failure to respond to the Complaint.  The Panel finds that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests 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.

Additionally, 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’s <metwins.com> domain name is linked to a search engine that provides links to various commercial websites, of which include those belonging to Complainant’s competitors.  Respondent’s website also displays Complainant’s METLIFE mark.  In addition to the competitor’s websites, there are also links on the webpage that direct Internet users to websites that are unrelated to Complainant’s business.  These Internet users are also subjected to numerous pop-up advertisements.  Respondent’s redirection of Internet users searching under Complainant’s mark to advertising website, is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Bank of America 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; see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services; see also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i).

Moreover, there is no proof in the record, including the WHOIS database, evidencing or suggesting Respondent is commonly known by the <metwins.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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; 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.

Registration and Use in Bad Faith

Furthermore, Respondent is wholly appropriating Complainant’s mark to lead Complainant’s customers to Respondent’s website.  Respondent is hosting numerous advertisements from which Respondent received a commission, on a pay-per-click basis, or some other form of compensation.  The Panel finds that Respondent is intentionally creating a likelihood of confusion to attract Internet users to Respondent’s website for its commercial gain, which constitutes bad faith registration and use pursuant to 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 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.

Respondent has also had a history or registering famous marks belonging to third parties in domain names for commercial benefit and has been ordered to transfer other domain names under the Policy in previous actions.  The Panel finds that Respondent’s pattern of registering domain names evidences bad faith registration and use under Policy ¶ 4(b)(ii).  See Hitachi, Ltd. v. Fortune Int’l Dev. Ent,  D2000-0412 (WIPO July 2, 2000) finding a pattern of conduct where Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.; see also Calvin Klein, Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) finding that Respondent has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trademarks; which points to a pattern of conduct on the part of Respondent, revealing that Respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names.

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(iii).

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 <metwins.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  November 16, 2004

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