DECISION

American International Group, Inc. v. Dimitry Ioffe c/o AIG Advisor Group

Claim Number: FA0408000314130

PARTIES

Complainant is American International Group, Inc. (“Complainant”), represented by Claudia Stangle, Two Prudential Plaza, Suite 4900, Chicago, IL 60601.  Respondent is Dimitry Ioffe c/o AIG Advisor Group (“Respondent”), Providence, RI 02903.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aiggroup.us>, registered with Melbourne It d/b/a Internet Names World Wide.

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 August 16, 2004; the Forum received a hard copy of the Complaint on August 17, 2004.

On August 17, 2004, Melbourne It d/b/a Internet Names World Wide confirmed by e-mail to the Forum that the domain name <aiggroup.us> is registered with Melbourne It d/b/a Internet Names World Wide and that Respondent is the current registrant of the name.  Melbourne It d/b/a Internet Names World Wide has verified that Respondent is bound by the Melbourne It d/b/a Internet Names World Wide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On August 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

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 September 16, 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 <aiggroup.us> domain name is confusingly similar to Complainant’s AIG mark.

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

3. Respondent registered or used the <aiggroup.us> domain name in bad faith.

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

FINDINGS

Complainant is one of the world’s leading international insurance and financial services organizations, with operations in approximately 130 countries and jurisdictions.  In 2003, Complainant’s revenues exceeded $81 billion.

In connection therewith, Complainant has used the AIG mark since 1968 to distinguish its insurance and financial services from those offered by others.  Complainant owns over 600 registrations for marks incorporating “AIG” worldwide, including registrations with the United States Patent and Trademark Office (Reg. Nos. 1,151,229 (issued Apr. 14, 1981), 1,172,557 (issued Oct. 6, 1981), and 1,851,675 (issued Aug. 30, 1994).

Respondent registered the domain name <aiggroup.us> on February 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(f), 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 or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

The registration of a mark with an appropriate governmental authority is sufficient under the Policy for a complainant to establish rights in a mark.  In the instant case, Complainant owns more than 600 registrations for marks that incorporate “AIG” worldwide and has provided proof of its registration of the AIG mark with the United States Patent and Trademark Office.  Therefore, Complainant has established rights in the AIG mark pursuant to paragraph 4(a)(i) of the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that the 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.  See also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark.

Determining the similarity between a complainant’s mark and a respondent’s domain name is accomplished by examining the differences between the mark and the domain name.  Top-level domains have been found to be irrelevant for purposes of the determination under paragraph 4(a)(i) of the Policy.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) finding that the addition of a top-level domain is without legal significance.

In the instant case, therefore, the Panel is to determine whether the second-level domain name “aiggroup” is confusingly similar to Complainant’s AIG mark.  The domain incorporates Complainant’s AIG mark in its entirety and Respondent has merely appended the term “group” to Complainant’s AIG mark.  In Am. Int’l Group, Inc. v. Lobsang Marques, the Panel held that the domain name <aigfinancial.net> was confusingly similar to Complainant’s AIG mark, because the “term ‘financial’ is regularly associated with Complainant” and therefore did not add any distinctive qualities to the domain name.  FA 126832 (Nat. Arb. Forum Dec. 6, 2002).  Similarly, in another proceeding, the Panel found that the domain name <aigassurance.com> was confusingly similar to Complainant’s AIG mark “because the term ‘assurance’ relates directly to Complainant’s business of providing insurance services.”  Am. Int’l Group, Inc. v. Lin Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003).  The Panels in the foregoing cases decided that the disputed domain names were confusingly similar to Complainant’s AIG mark because the domain names incorporated Complainant’s AIG mark in its entirety and appended terms that related directly to Complainant’s business.  The appended terms in the previous cases were directly related to the types of services offered by Complainant under its AIG mark.  In the instant case, Respondent has appended the term “group” to Complainant’s mark, which not only directly relates to Complainant’s business, but actually calls to mind the source of the services offered under the AIG mark, namely American International Group, Inc.

Therefore, the Panel finds that the disputed domain name <aiggroup.us> is confusingly similar to Complainant’s AIG mark pursuant to paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The failure of a respondent to respond to a Complaint may be construed as an implicit admission that the respondent lacks rights and legitimate interests in the disputed domain name because the nature of the evidence necessary to determine whether a respondent has rights or legitimate interests is “uniquely within the knowledge and control of the respondent.”  G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002). See also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names; see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Moreover, the lack of a response allows the Panel to accept all reasonable allegations set forth in the Complaint as true.  See also Vert. 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; see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence.

Pursuant to paragraph 4(c)(i), rights or legitimate interests in the disputed domain name may be established if Respondent is “the owner or beneficiary of a trade or service mark that is identical to the domain name.”  There is no evidence in the record to indicate that Respondent even operates in a specific trade or offers a particular service.  Therefore, the Panel finds that paragraph 4(c)(i) is not established for Respondent.

Likewise, there is no evidence in the record to suggest that Respondent has used the disputed domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(ii) or a legitimate noncommercial or fair use of the domain name pursuant to paragraph 4(c)(iv).

The only evidence in the record that bears on whether Respondent is commonly known by the domain name <aiggroup.us> is the incomplete WHOIS registration information.  The registration information lists the registrant organization as “AIG Advisor Group,” but that is the extent of the evidence in support of the proposition that Respondent may possibly be known by that organizational name.  The Panel requires evidence that the public identifies a respondent with a particular domain name and the simple inclusion of an organizational name in the registration information fails to establish paragraph 4(c)(iii) of the Policy.  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) finding that without demonstrable evidence to support the notion that a respondent is commonly known by a domain name, the notion must be rejected; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question.

Furthermore, Complainant has not granted license and has not otherwise authorized Respondent to use the AIG mark.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant; see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name.

Therefore, Complainant has established that Respondent lacks rights and legitimate interests in the domain name <aiggroup.us> pursuant to paragraph 4(a)(ii) of the Policy.

Registration or Use in Bad Faith

With over 600 registrations of marks that incorporate the AIG mark with governments around the world, and with revenues that exceed $81 billion, Complainant has established the extensive use of its AIG mark.  Given the widespread use of the AIG mark, Respondent reasonably should have been aware of Complainant’s AIG mark.  The strong correlation between the addition of the term “group” to Complainant’s company name is evidence that Respondent intentionally registered the disputed domain name to capitalize on the public’s recognition of the AIG mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”; see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Moreover, Complainant has charged that Respondent has registered or used the disputed domain name in bad faith.  Respondent has failed to provide evidence to rebut this charge.  Likewise, Respondent has not provided evidence of any connections between the disputed domain name and any good faith business interest it may have in the domain name.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) finding bad faith where Respondent failed to provide evidence to controvert Complainant's allegation that Respondent registered the name in bad faith and any future use of the name would only cause confusion with Complainant’s mark; see also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue.”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) finding bad faith registration and use where Respondent registered a domain name incorporating Complainant’s mark and Respondent failed to show circumstances in which such a registration could be done in good faith.

Therefore, Complainant has established that Respondent registered the domain name <aiggroup.us> in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <aiggroup.us> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: September 27, 2004

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