DECISION

American International Group, Inc. v. Garvey Insurance Group

Claim Number:  FA0402000238653

PARTIES

Complainant is American International Group, Inc. (“Complainant”), represented by Claudia Stangle, Two Prudential Plaza, Suite 4900, Chicago, IL 60601.  Respondent is Garvey Insurance Group (“Respondent”), 1019 Lone Buck Pass, Cedar Park, TX 78613.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aigtx.com>, registered with Namezero.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically February 20, 2004; the Forum received a hard copy of the Complaint February 23, 2004.

On March 3, 2004, Namezero confirmed by e-mail to the Forum that the domain name <aigtx.com> is registered with Namezero and that Respondent is the current registrant of the name. Namezero verified that Respondent is bound by the Namezero registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 23, 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@aigtx.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 March 29, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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. The domain name registered by Respondent, <aigtx.com>, is confusingly similar to Complainant’s AIG mark.

2. Respondent has no rights to or legitimate interests in the <aigtx.com> domain name.

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

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

FINDINGS

Complainant, American International Group, Inc., is a large international insurance and financial services organization with operations in approximately 130 countries and jurisdictions.  It has various registrations in the AIG mark (Reg. Nos. 1,151,229, 1,172,557, and, 1,851,675, registered March 22, 1979, October 6, 1981, and August 30, 1994, respectively) with the U.S. Patent and Trademark Office (“USPTO”).

Respondent registered the <aigtx.com> domain name September 12, 2003.  Respondent is using the domain name to sell insurance, displaying the wording “American Insurance Group of Texas” and “AIGTX.”

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights to and interests in the AIG mark both by its registration with the USPTO and through continuous use in commerce.  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).

The <aigtx.com> domain name is confusingly similar to Complainant’s AIG mark.  Because “TX” is a common abbreviation of the State of “Texas,” the addition of the letters “TX” does not significantly distinguish the domain name from the mark.  It is similar to adding a geographic term or generic word.  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the domain name that Respondent registered.  Respondent has not answered the Complaint.  In the absence of a Response, the Panel is allowed to accept all reasonable assertions in the Complaint as true.  See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); 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).

Respondent is using Complainant’s mark to sell in the same area of commerce.  In fact, Respondent is trying to compete with Complainant using Complainant’s protected mark.  Given the fame of Complainant’s mark, the Panel finds that a competing insurance company would know that Complainant had rights in its own mark.  Respondent’s conduct in selling insurance under Complainant’s mark, is an attempt to compete with Complainant and i not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

In addition, nothing in the record, including the WHOIS registration information, indicates that Respondent is commonly known by the disputed 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 Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name and is not using the domain name in connection with a legitimate or fair use).

Registration and Use in Bad Faith

Respondent is using the <aigtx.com> domain name to sell insurance.  Not only is Respondent selling insurance on its website, it is using Complainant’s AIG mark in one of the headers of the site.  Because Respondent is a competing insurance company, and because Complainant is one of the largest insurance companies in the world, the Panel finds that Respondent intended to disrupt Complainant’s business with its use of the disputed domain name, which is bad faith registration and use under Policy ¶ 4(b)(iii).  See General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); 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).

Additionally, Respondent used the disputed domain name to attract business by creating confusion with Complainant.  Attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark is bad faith registration and use, pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

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

Hon. Carolyn Marks Johnson, Panelist

Dated: April 9, 2004

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