WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Metropolitan Life Insurance Company v. Ong Le Van Duc
Case No. D2014-0170
1. The Parties
The Complainant is Metropolitan Life Insurance Company of New York, United States of America (“United States”), , represented by Heidi C. Constantine, United States.
The Respondent is Ong Le Van Duc of Viet Nam.
2. The Domain Names and Registrars
The disputed domain names <bidv-metlife.com> and <bidvmetlife.com> are registered with P.A. Viet Nam Company Limited and <bidvmetlife.net> is registered with OnlineNic, Inc. d/b/a China-Channel.com (together the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2014. On February 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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”).
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 February 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2014.
The Center appointed Nicholas Weston as the sole panelist in this matter on April 1, 2014. 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.
The language of this administrative proceeding is English, being one of the languages of the registration agreement. The Respondent has indicated familiarity or access to English language translation by sending an English language response in correspondence to the Complainant by email dated February 21, 2014.
4. Factual Background
The Complainant operates a financial services, insurance and annuities business with more than 90 million customers globally. The Complainant holds registrations for the METLIFE trademark and variations of it in various countries including the United States, which it uses to designate banking, insurances, retirement services and other financial services. Its United States Registration No. 1541862 has been in effect since 1989. Approximate global revenue for sales of METLIFE brand services in 2013 was USD 68 billion.1
The Complainant conducts business on the Internet using numerous domain names containing the word “metlife” including <metlife.com> registered in 1994.
The Respondent registered the Disputed Domain Names <bidvmetlife.com> on September 23, 2013 , <bidv-metlife.com> on October 25, 2013 and <bidvmetlife.net> on September 26, 2013.
These resolve, in the cases of <bidvmetlife.com> and <bidv-metlife.com>, to a website purporting to be that of the Bank for Investment & Development of Vietnam (BIDV), and in the case of <bidvmetlife.net> to a website purporting to be that of the Bank for Investment and the Development of Vietnam Insurance Corporation (“BIC”).
5. Parties’ Contentions
The Complainant cites its trademark registrations of the trademark METLIFE in various countries as prima facie evidence of ownership.
The Complainant submits that the mark METLIFE is well-known throughout the United States and globally. The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names <bidv-metlife.com>, <bidvmetlife.com> and <bidvmetlife.net>. It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names incorporate in their entirety the METLIFE trademark (see Dell, Inc., v. George Dell & Dell Net Solutions, WIPO Case No. D2001-0602) and that the similarity is not removed by the addition of the letters “bidv”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent has no trademark rights in or license to use the Complainant’s trademark (presumably alluding to Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055) and that “it was confirmed by BIDV that none of the disputed domain names registrations is into their knowledge (sic).” Complainant contends that “Respondent did not register the (Disputed) Domain Name(s) until late September 2013 which was only after both MetLife and BIDV (and BIC) have entered into MoU to form life insurance joint venture.” The Complainant also contends that “when Respondent has no obvious connection with the Domain Name (apart from having registered it) the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist” (citing: Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s METLIFE mark in the Disputed Domain Names, the Respondent is “has registered the (Disputed) Domain Name(s) with the intent of exploiting Complainant’s name and reputation for its own benefit” (presumably alluding to Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946). The Complainant further contends that Respondent “registered the contested domain name in order to prevent the Complainant from reflecting said mark in a corresponding domain name, and possibly to try to obtain financial income from the Complainant to transfer said domain name to it” (citing DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232 and further submits that “since the Respondent did not reply to the Complainant’s correspondences…Respondent was acting in bad faith” (citing DCI S.A. v. Link Commercial Corporation, supra”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark METLIFE in the United States and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark METLIFE the United States , pursuant to United States Trademark Registration No. 1541862 registered from May 30, 1989. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark METLIFE.
The Panel also finds that the mark METLIFE is well-known: see Metropolitan Life Insurance Company v. Registrant : Taranga Services Pty Ltd / Domain Admin, WIPOCase No. D2013-1016 (“the Complainant’s well-known METLIFE marks”), Metropolitan Life Insurance Company v. Ramon Aguirre, WIPO Case No. DVE2010-0004 “This Panel admits the uncontested affirmations made by the Complainant, regarding the widespread publicity, fame and recognition of the trademark METLIFE”.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the METLIFE trademark, the Panel observes that the Disputed Domain Names comprise (a) an exact reproduction of the Complainant’s trademark; (b) conjoined with the prefix “bidv”; and (c) followed by the generic Top-Level Domain (gTLD) suffixes “.com”. and “.net”. with, in one instance, the words “bidv” and “metlife” conjoined by a dash “-“.
It is well established that the gTLD used as part of a domain name should generally be disregarded; see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374. The relevant comparison to be made is with the second level portion of the Disputed Domain Names <bidv-metlife.com>, <bidvmetlife.com> and <bidvmetlife.net>.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, a descriptive word; see Oki Data Americas, Inc. v. ASD, Inc., supra; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033.
This Panel finds that the additional element, specifically the word “bidv”, preceding the Complainant’s registered trademark, is an obvious reference to the joint venture entered into by the Complainant in July 2013 with the Bank for Investment and Development of Viet Nam which goes by the acronym “BIDV” and with the Bank for Investment and Development of Vietnam Insurance Corporation which goes by the acronym “BIC” to establish a life insurance joint venture in Viet Nam. In this Panel’s view, the addition of the acronym BIDV does not serve to distinguish the Disputed Domain Names in this matter and in fact compounds the confusing similarity to the registered trademark.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000 1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Names are therefore confusingly similar to the METLIFE trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Names. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks such rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1)
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name may be confusingly similar to the registered mark of a complainant (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2)
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it is misleadingly directing Internet users to webpages purporting to be those of BIDV and BIC and thereby illegitimately holding itself out as somehow affiliated with or connected to the Complainant. The Complainant states that it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark and asserts, (with no supporting evidence, but under attestation) that its enquiries with its joint venture partner BIDV do not reveal any knowledge by BIDV of the Respondent or grant of authority to so act. In the absence of a Response, the Panel accepts the validity of this submission: Clerical Medical InvestmentGroup Limited v. Clericalmedical.com (Clerical & Medical Services Agency), supra.
Moreover, on any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Names.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Names. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s well-known mark in order to attract Internet users to its websites and has been using the Disputed Domain Names to divert Internet traffic to its web pages.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
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 web site 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 web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Names in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The trademark METLIFE is so well-known globally for financial services and insurances that it is inconceivable that the Respondent might have registered a few domain names similar to or incorporating the mark without knowing of it. The fact that an announcement was made in Viet Nam concerning the joint venture between BIDV, BIC and Metlife in July 2013 and the Respondent, located in Vietnam, registered the Disputed Domain Names shortly thereafter strongly suggests that the Respondent was aware and indeed targeted the joint venture and the Complainant’s trade mark rights at the time of registration and this Panel so finds.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark METLIFE, U.S. Registration No. 1541862 registered from 1989 predating its rights from the Respondent’s registration by 25 years.
This Panel finds that the Respondent has taken the Complainant’s trademark METLIFE and incorporated it in the Disputed Domain Names without the Complainant’s consent or authorization, in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Presumably by doing so Respondent seeks to obtain some kind of compensation either by click-throughs or sale of the Disputed Domain Names. This Panel finds that by having registered three domain names that impact the rights of the Complainant as a trademark owner, Respondent has “engaged in a pattern of such conduct” within the meaning of the Policy (see Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (“A “pattern of conduct” as required in Paragraph 4.b.(ii) typically involves multiple domain names directed against multiple Complainants, but may involve multiple domain names directed against a single Complainant”).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <bidv-metlife.com>, <bidvmetlife.com> and <bidvmetlife.net> be transferred to the Complainant.
Date: April 16, 2014