national arbitration forum

DECISION

American International Group, Inc. v. URL Pro

Claim Number:  FA0411000360972

PARTIES

Complainant is American International Group, Inc. (“Complainant”), represented by Claudia Werner Stangle, Two Prudential Plaza, Suite 4900, Chicago, IL 60601.  Respondent is URL Pro (“Respondent”), P.O. Box 30521 SMB, George Town, Grand Cayman, KY 32084.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americanhomeassurance.com>, registered with Moniker Online Services, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2004.

On November 8, 2004, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <americanhomeassurance.com> is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 November 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 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@americanhomeassurance.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <americanhomeassurance.com> domain name is identical to Complainant’s AMERICAN HOME ASSURANCE mark.

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

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

B.  Respondent 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.  Since 1899, Complainant, through its member companies, has used the AMERICAN HOME ASSURANCE mark in connection with property and casualty insurance underwriting services.  Complainant has registered various AMERICAN HOME ASSURANCE marks with the United States Patent and Trademark Office (“USPTO”), including Reg. Nos. 1,878,859 (issued February 14, 1995), 2,108,205 (issued October 28, 1997) and 2,122,738 (issued December 23, 1997). 

Respondent registered the <americanhomeassurance.com> domain name on January 23, 2004.  Respondent’s domain name resolves to a search engine website that makes prominent use of Complainant’s AMERICAN HOME ASSURANCE mark.  The website also links to competing insurance companies.

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 AMERICAN HOME ASSURANCE mark through registration with the USPTO and through the continuous use of the mark in commerce since 1899.  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 <americanhomeassurance.com> domain name is identical to Complainant’s AMERICAN HOME ASSURANCE mark because the domain name fully incorporates the mark, adds the generic top-level domain “.com” to the mark and omits the spaces between the words “american,” “home” and “assurance.”  The addition of the generic top-level domain “.com” and the omission of the spaces between the words “american,” “home” and “assurance” are insufficient to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).

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

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See 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.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

Respondent is using the <americanhomeassurance.com> domain name to redirect Internet users to a search engine website that also links to various competing insurance companies. Furthermore, the Panel infers that Respondent likely receives monetary compensation by redirecting Internet users to Respondent’s website. Respondent’s use of a domain name identical to Complainant’s mark to redirect Internet users to a website linking to competing companies, where Respondent likely receives referral fees, is not a use in connection with a bona fide offering of goods or 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 Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

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

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by registering a domain name confusingly similar to Complainant’s mark and using it to market competing insurance companies.  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)  (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Furthermore, Respondent is capitalizing on the goodwill of the AMERICAN HOME ASSURANCE mark by using the disputed domain name to divert Internet users to a website featuring links for competing services.  Since the disputed domain name contains Complainant’s mark, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting website.  Therefore, Respondent’s opportunistic use of the disputed domain name represents bad faith registration and use under Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

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

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

           

John J. Upchurch, Panelist

Dated:  December 20, 2004

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