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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Metropolitan Life Insurance Company v. HLP General Partners Inc.

Case No. D2005-1323

1. The Parties

The Complainant is Metropolitan Life Insurance Company, Long Island City, New York, United States of America.

The Respondent is HLP General Partners Inc., Santa Monica, California, United States of America, represented by Davis Wright Tremaine LLP, New York, New York, United States of America.

2. The Domain Names and Registrar

The disputed domain names <met-art.com>, <metgirls.com> and <met-teens.com> (the “Domain Names”) are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2005. On December 22, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Names at issue. On December 23, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on January 6, 2006. 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”), 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 January 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2006. The Response was filed with the Center on February 11, 2006, and the Respondent submitted two corrections to the Response on February 14, 2006.

On February 17, 2006, the Complainant submitted a request to amend the Complaint by adding three additional domain names also registered by the Respondent, <met-lite.com>, <met-live.com> and <metlite.com>. The Respondent notified the Center in a letter dated February 23, 2006, of its willingness to transfer those three domain names to the Complainant, and subsequent correspondence between the parties indicates that they have agreed to such a transfer. The Complainant notified the Center of these developments on March 3, 2006, and withdrew its request to amend the Complaint by adding these three domain names, which are therefore not a subject of this UDRP proceeding.

The Complainant also requested permission to reply to the Response and included the substance of its reply in the text of its March 3, 2006 letter to the Center. In letters to the Center dated February 23 and March 14, 2006, the Respondent objected to the Complainant’s request to submit a reply, while also presenting its rebuttal of the factual and legal arguments advanced in the Complainant’s March 3, 2006 submission.

The Center appointed W. Scott Blackmer, James Bridgeman and Tony Willoughby as panelists in this matter on April 5, 2006. The Panel finds that it was properly constituted. Each member of 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.

4. Factual Background

The Complainant, a Delaware corporation headquartered in New York, has been selling insurance under the name “Metropolitan Life Insurance” since 1868. It operates a family of financial services companies providing insurance, annuities, pension funds, residential and commercial mortgages, loans, real estate brokerage, and real estate management services. The Complainant is by some measures the largest life insurer in North America, and it manages pension and insurance plans for tens of millions of employees of plan sponsors. The Complainant also sells insurance directly in approximately ten countries outside the United States. The Complainant is included in the S&P 500, the Fortune 500, and the FT Global 500.

The Complainant holds numerous registered trademarks in the United States and other countries that include the letters “MET,” apparently an abbreviation of “Metropolitan.” These marks, associated with insurance and other financial services, include MET; METLIFE; GET MET, IT PAYS; MET-REVIEW; METLINK; METLIFE ONLINE; METTRUST; METNET; METFLEX; METLIFE 2-9; METPAY; METLIFE BANK; METDESK; METSMART; METLAW; METSELECT; METPREMIER; MET P&C; and METFLEX EXEC. The MET and METLIFE word marks were registered in the United States in 1989, both registrations indicating first use in commerce in 1968.

The Complainant is a publicly traded company listed on the New York Stock Exchange with the stock ticker symbol “MET.” The Complainant’s principal public website is located at “www.metlife.com”, a domain name identical to its registered METLIFE mark.

The Respondent, according to filings with the United States Patent and Trademark Office (USPTO), is a Texas corporation that is the sole general partner of Hydentra, LP, a Delaware limited partnership. According to the Respondent’s undisputed claims in this proceeding, it operates one of the most famous nude photography websites in the world the website at “www.met-art.com” to which all three of the Domain Names currently resolve. The site offers high-resolution nude photos by professional photographers, as well as both recorded and live web-camera videos of some of the models. Apart from a “free tour,” the site’s photographic and video content is available only on a paid subscription basis.

The site’s popularity is undisputed. The Respondent claims 250 million unique visits per year, with paid subscribers from more than 45 countries. Internet traffic analysis provided by Alexa.com indicates that the Respondent’s website is one of the 500-600 most frequently visited websites in the world.

The home page of Respondent’s website advertises that it offers “the largest, freshest, classiest collection of teen nude art and fine photography in the world.” The website’s focus is expressly on “teen” nudes, and the Respondent first published the website in 1999 at “www.mosteroticteens.com”. The home page assures visitors that the models were 18 years of age or older when photographed, and a page labeled “18 U.S.C. 2257” (referring to a section of the United States federal criminal code) discusses legal compliance. That page states that the site does not include images of explicit sexual conduct and that contributing photographers are required to submit proof of the model’s age.

The Respondent asserts that the site was colloquially referred to as “MET,” abbreviating its original title, “Most Erotic Teens,” by the time the Respondent registered <met-teens.com> in November 2001, and began using that Domain Name for the same content originally displayed at “www.mosteroticteens.com”. In June 2002, the Respondent registered <met-art.com>, the Domain Name to which all of the Domain Names in this proceeding currently resolve. The Respondent registered <metgirls.com> in September 2003. According to the Respondent, it initially maintained a separate website at the latter address, but since June 2005, that Domain Name has redirected visitors to “www.met-art.com”.

The Respondent holds a United States trademark registration for a design incorporating the words “METART FINE PHOTOGRAPHY,” associated with online “adult-oriented entertainment.” The mark was registered in December 2004, and indicates first use in commerce in May 2002. This mark is prominently displayed on the Respondent’s website at “www.met-art.com”.

The Respondent also applied in October 2003 for United States trademarks for the words METART and METGIRLS, respectively, both also associated with online “adult-oriented entertainment” and both claiming first use in commerce in May 2002. In October 2004, the Complainant initiated a trademark opposition proceeding before the USPTO Trademark Trial and Appeal Board (“TTAB”), opposing registration of those two marks.

On November 16 and 18, 2005, the Complainant sent cease-and-desist letters to the Respondent asserting that the Domain Names were likely to be confused with the “MET Family of Trademarks” and tarnish the Complainant’s reputation. The Respondent rejected these claims in a letter from its counsel dated December 8, 2005, and the Complainant submitted its UDRP Complaint to the Center two weeks later.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Names are confusingly similar to its “famous MET Family of Marks,” simply adding generic words to the Complainant’s registered MET mark. As the Complainant is engaged in “philanthropic endeavors relating to girls, teens, and the arts,” in addition to its “widely known financial services business,” it fears that Internet users will be at least initially misled as to the source of the website to which the Domain Names resolve.

The Complainant infers that the Domain Names were chosen specifically “as a way of attracting users by adopting the Complainant’s famous MET Family of Marks,” which are so well known throughout the United States that “there can be no legitimate use by Respondent.” The Complainant has not authorized the Respondent to use the MET mark, and it argues that the Respondent itself is not known by the Domain Names.

The Complainant concludes that the registration and use of the Domain Names was in bad faith under the Policy, paragraph 4(b)(iv), since it infers that the Respondent used the Domain Names intentionally in an attempt to attract Internet users to its site for commercial gain by creating a likelihood of confusion with the Complainant’s marks. The Complainant argues that linking the confusingly similar Domain Names to “sexually explicit material” is also evidence of bad faith, as is the Respondent’s “inappropriate initial response to the cease and desist letter” (referring to the first reply fax from the office of Respondent’s trademark counsel, which simply indicated that Mr. Douglas was not at that number).

In its supplemental filings, the Complainant cites the 2004 registration of three additional domain names incorporating “met” (which the Respondent has agreed to transfer) as additional evidence of bad faith. The Complainant also disputes certain factual characterizations and arguments made in the Response, and argues that the pending TTAB proceeding is no bar to a resolution in this UDRP proceeding.

B. Respondent

The Respondent challenges the scope of the Complainant’s asserted trademark rights and questions whether those marks are internationally famous. The Respondent argues that the Domain Names are based on its own marks, to which it has legitimate rights, and that “met” is used in the marks and domain names of many other entities as well. This reduces the likelihood of confusion with the Complainant financial services company. The Respondent notes that while its website is one of the 500-600 most popular sites on the entire World Wide Web, as measured by traffic, the same measure places the Complainant’s website at a rank of 14,196.

Implicitly, the Respondent cites its own popularity in its own very different field of enterprise as a counter to the Complainant’s inference that the Domain Names must have been selected and used merely as a ploy to trade on the Complainant’s fame, capturing at least briefly the attention of Internet users seeking information about the Complainant’s financial services or perhaps its philanthropic initiatives. Further, the Respondent explains the choice of the Domain Names as related to the abbreviation of its first site address and title, “www.mosteroticteens.com”.

The Respondent denies any intent to exploit the Complainant’s marks and, therefore, any bad faith in its registration and use of the Domain Names. The Respondent points out that it is pursuing a lawful business, and the fact that the business is “adult-oriented” is not sufficient to support a conclusion of bad faith.

The Respondent views the UDRP Complaint as an illegitimate attempt to “open a second front” in the Complainant’s opposition to the Respondent’s METART and METGIRLS trademark applications, and it asks the Panel to “stay” the UDRP proceeding pending the outcome of the TTAB proceeding.

6. Discussion and Findings

Under Paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:

(i) the Domain Names are 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 the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Supplemental Filings

The Complainant’s correspondence with the Center included a proposed amendment to the Complaint, later withdrawn, and outlined the substance of its proposed “Reply” to the Response. The Respondent subsequently addressed those issues in two letters to the Center.

The Rules do not explicitly provide for supplemental filings. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Therefore, UDRP panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.

The Panel will consider the parties’ arguments in the supplemental filings to the extent that they concern the significance of the three later-discovered domain names registered by the Respondent in 2004, which the Complainant cites as an additional instance of bad faith. Otherwise, the parties’ supplemental filings do not raise new, material issues of fact or law, and as such they do not merit further briefing and consideration.

B. Suspension or Termination

Paragraph 18(a) of the Rules gives the Panel discretion to suspend or terminate a UDRP proceeding where the Domain Name is the subject of other legal proceedings:

(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

Although this provision of the rules is captioned “Effect of Court Proceedings”, the text refers more broadly to “legal proceedings”. The Respondent points out that other UDRP panels have exercised their discretion under the Rules, paragraph 18(a), to suspend or terminate UDRP proceedings during the pendency of a TTAB proceeding in which the TTAB would determine disputed ownership rights. See Readygo, Inc. v. Michael Lerner Productions, WIPO Case No. D2000-0298. As indicated in the WIPO Final Report of the Internet Domain Name Process (April 30, 1999) (e.g., in paragraphs 24, 25, and 172), the Policy was fundamentally designed to provide expeditious relief against cybersquatters, not to resolve complex disputes over competing rights that might be more fully investigated in other fora.

But this case does not appear to involve a complex dispute over ownership rights. A TTAB decision in favor of registering Respondent’s marks that are identical or similar to two of the Domain Names would indeed strengthen the Respondent’s claims of legitimate rights in the Domain Names (although it would not necessarily affect the third Domain Name, <met-teens.com>). On the other hand, a TTAB decision against registration would not necessarily dictate a conclusion that the Respondent both registered and used the Domain Names in bad faith within the meaning of the Policy. Given the Panel’s conclusions on the subject of bad faith, as discussed below, the Panel does not consider it appropriate to exercise its discretion to suspend or terminate the current UDRP proceedings.

C. Identical or Confusingly Similar

The Complainant indisputably has rights to the registered MET mark and has obtained several other registered marks adding common words to the letters “MET,” prominently METLIFE.

The Domain Names all begin with the sequence “met”. While this is similar to the Complainant’s MET mark, the Panel questions whether it is ‘confusingly’ similar. “met” is used in connection with a wide range of products, services, and institutions, as a search engine query quickly demonstrates. This makes it less likely that Internet users would assume that a Domain Name beginning with “met” is sponsored by the Complainant Metropolitan Life Insurance Company. The Respondent offers proof of numerous domain names − from <metinsurance.com> and <metfinance.com> to <metflowers.com> − that begin with “met” and are not registered to the Complainant. Indeed, the USPTO trademark database lists more than a score of registered United States trademarks beginning with “MET” (such as METSOURCE and MET-PLUS).

Where a registered mark is more distinctive, a UDRP panel can more readily conclude that a domain name incorporating it is “confusingly” similar, and that the addition of apparently relevant generic words in a domain name merely compounds the potential confusion as to the source. See, e.g., Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (<microsoftcustomerservice.com>). Here, the MET mark is much less unique, and the generic words added to it in the Domain Names (“art,” “girls,” “teens”) are not obviously related to the financial services for which the Complainant is primarily famous. The Complainant cites its support of philanthropies such as Girls Clubs where these words could be relevant, but it does not make a persuasive argument that this connection is likely to be known to the hundreds of thousands (perhaps millions) of Internet users who have visited the Respondent’s website.

The Complainant cites nine UDRP proceedings in which panels have found its marks to be famous and distinctive. Eight of the proceedings were uncontested and resulted in an order to transfer the domain names at issue as confusingly similar; the respondent in the ninth case stipulated to a transfer. However, as the Respondent observes, all of these proceedings involved domain names incorporating the entire METLIFE mark and not solely the less distinctive MET mark.

In any event, because of the Panel’s conclusions on the element of bad faith, discussed below, it is not necessary to parse the issue of confusing similarity in this proceeding.

D. Rights or Legitimate Interests

The Policy’s non-exhaustive list of possible grounds for establishing rights or legitimate interests in a domain name includes the following (Policy, paragraph 4(c)):

(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[.]

The Panel finds evidence of such use, or demonstrable preparations for use, in this proceeding. The Respondent applied to the USPTO in October 2003, for its METART FINE PHOTOGRAPHY mark, which was registered in December 2004. It also applied in October 2003 to register the words METART and METGIRLS, identical (except for the placement of hyphens) with two of the three Domain Names at issue. The Respondent registered the Domain Name <met-teens.com> in November 2001, three years before the Complainant’s November 2004 cease-and-desist letters. It registered <met-art.com> in June 2002, more than two years before those letters and before the Complainant filed an opposition to the registration of the METART mark. The Respondent registered <metgirls.com> in September 2003, more than a year before the cease-and-desist letters and the opposition before the TTAB provided notice of a dispute, respectively, over that Domain Name and the application to register the METGIRLS mark. The Complainant does not contest the Respondent’s assertion that each of the three Domain Names was then used in connection with its business (advertising and selling nude photographs and videos online) before notice of a trademark or UDRP dispute.

The Complainant argues instead that the Respondent’s interests in the Domain Names cannot be considered “legitimate” or in connection with a “bona fide offering of goods or services.” Its rationale is simply that the Complainant’s own, preexisting marks are famous and have been used “in connection with such a wide variety of products for so many years” that the Respondent must have intended to profit from a likelihood of confusion with the Metropolitan Life Insurance Company.

This very contention is also the core of the Complainant’s bad-faith argument. Rather than deciding this issue in the context of the second element, therefore, the Panel will discuss it below in connection with the third element − bad faith.

E. Registered and Used in Bad Faith

The Policy, paragraph 4(b)(iv), includes the following in a non-exhaustive list of circumstances evidencing bad faith:

(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.

There is no direct evidence that the Respondent registered and used the Domain Names to capitalize on the Complainant’s reputation, although the history of cybersquatting is replete with instances of pornographic websites labeled with famous commercial names. The Respondent expressly denies such intent in this case. Thus, the Panel must weigh the evidence from which the Complainant infers this kind of bad faith against the plausibility of the reasons given by the Respondent for registering and using the Domain Names.

According to the Respondent, online newsgroups and chat websites commonly referred to its website as “MET,” an abbreviation for the website’s initial name, “Most Erotic Teens,” beginning shortly after the website was launched in 1999. The Respondent sought to capitalize on this and, later, to emphasize the artistic nature of its photos. The domain name <metart.com> was already registered by an unrelated California company, MetArt, Inc., since 1997. (The Panel also notes that, according to the WHOIS database, the simpler domain name <met.com> has been registered by the Manhattan Ensemble Theatre in New York since 1993.) Thus, the Respondent settled on <met-teens>, <met-art> (with a hyphen), and <metgirls> (the latter originally pointing to a separate website). This explanation is not implausible without countervailing evidence of a more sinister motive.

The Complainant’s inference of bad faith relies principally on the fame of its MET marks. It cites UDRP decisions such as Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in which the disputed domain name <veuveclicquot.org> was found to be “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” As discussed above in connection with the issue of “confusing similarity,” the problem with this inference is that the letters “MET” are not so distinctive and so uniquely associated with the Complainant. There appears to the Panel to be a much greater likelihood of confusion, and therefore of opportunistic intent, with a domain name incorporating the name VEUVECLICQUOT than with one incorporating the letters “MET”, found in numerous unrelated trademark and domain name registrations.

The Complainant suggests that the presence of “sexually explicit material” on the Respondent’s website is itself evidence of bad faith and heightens the risk of tarnishing the Complainant’s reputation. The parties dispute the “sexually explicit” nature of the photos and videos published on the website, but the Panel finds no need to decide whether the website is art or pornography. The Complainant does not dispute the Respondent’s claims that it complies with applicable laws in offering its product. The fact that the product is “adult entertainment” of some sort is not dispositive in a UDRP proceeding, despite the fact that so many cybersquatting cases involve precisely the use of famous names to attract Internet users to what turn out to be pornographic websites. Something more is required for the Complainant to meet its burden of proving bad faith, either direct evidence or additional support for a reasonable inference that, more likely than not, the Domain Names were chosen to exploit the fame of the Complainant’s marks. Here, there is no such direct evidence; the inference is dubious because MET is not a particularly unique mark; and the Respondent offers a plausible contrary explanation for its choice of the Domain Names, which seem to be doing quite well commercially even in countries where the Complainant is not so well known as it is in the United States.

The Complainant also points to the Respondent’s “inappropriate initial response to the cease and desist letter” as evidence of bad faith. But it had a substantive response from the Respondent’s counsel within a few weeks of sending the first letter, and the Panel does not draw any adverse conclusions from this chain of events.

In its supplemental filings, the Complainant also asserts bad faith in the Respondent’s 2004 registration of three additional domain names incorporating “met” (which the Respondent has since agreed to transfer). The Panel notes that these domain names (<met-lite.com>, <met-live.com>, and <metlite.com>) are much closer than the Domain Names at issue in this proceeding to the Complainant’s more distinctive METLIFE mark; the Respondent’s decision to transfer them may be viewed as prudent to avoid litigation. There is no evidence that the domain names were ever put into use to direct visitors to any website operated by the Respondent.

The Respondent in its supplemental filings denies that these three additional domain names were chosen to mislead Internet users. It observes that all of them were registered before the cease-and-desist letters and before TTAB sent notice to the Respondent of the Complainant’s opposition to the registration of METART and METGIRLS, putting the Respondent on notice of the Complainant’s broad claims with respect to what it terms “the MET Family of Marks.” The Respondent explains its choice of these domain names as relating to business plans to offer a reduced (“lite”) version of its website and to highlight its offering of live web camera feeds as opposed to recorded videos. It also points out that the Complainant has not used the words “lite” or “live” in connection with its own offerings, and those are not words that the public might readily associate with its financial services.

For both the three Domain Names at issue in this proceeding and the three more recently registered domain names that the Respondent has agreed to transfer to the Complainant, the Panel is faced with a plausible explanation by the Respondent and a relatively weak argument for inferring bad faith in the use of a three-letter sequence that is also found in many other marks and domain names. The Complainant may, of course, present its infringement claims to a court, which can more fully examine relevant evidence and the credibility of witnesses. But its Complaint simply does not meet the standard for establishing bad-faith registration and use of the Domain Names under a Policy designed to provide quick relief against egregious cases of cybersquatting.

The Panel concludes that the Complainant has not satisfied the third element of the Policy.