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Generic Top Level Domain Name (gTLD) Decisions |
American International Group, Inc. v.
Henry Chan
Claim
Number: FA0404000257100
Complainant is American International Group, Inc. (“Complainant”),
represented by Claudia Stangle, of Leydig, Voit & Mayer, Ltd., Two Prudential Plaza, Suite 4900, Chicago, IL
60601. Respondent is Henry Chan (“Respondent”), Post Office
Box SS-6438/A124, Nassau, Bahamas.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aigtoday.com>, <aigaccess.com> and
<aigannunityaccess.com>, registered with Iholdings.com, Inc. d/b/a
Dotregistrar.com.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 16, 2004; the
Forum received a hard copy of the
Complaint on April 19, 2004.
On
April 26, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain names <aigtoday.com>,
<aigaccess.com>, and <aigannunityaccess.com> are
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the names. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
April 27, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
May 17, 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@aigtoday.com, postmaster@aigaccess.com and
postmaster@aigannunityaccess.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
May 24, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon.
Ralph Yachnin 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 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aigtoday.com>,
<aigaccess.com> and <aigannunityaccess.com> domain names
are confusingly similar to Complainant’s AIG and AIG ANNUITY ACCESS marks.
2. Respondent does not have any rights or
legitimate interests in the <aigtoday.com>, <aigaccess.com> and
< aigannunityaccess.com> domain names.
3. Respondent registered and used the <aigtoday.com>,
<aigaccess.com> and <aigannunityaccess.com> domain names
in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American International Group, Inc., is in the insurance and financial services
business.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the AIG mark (Reg. No. 1,151,229,
issued April 14, 1981
and used for insurance and insurance-related services; Reg. No. 1,172,557,
issued October 6, 1981 and used
for insurance underwriting services; Reg. No.
1,851,675, issued August 30, 1994 and used for insurance underwriting in all
fields
of insurance except risk management safety programs), AIG ANNUITY ACCESS
(Reg. No. 2,778,761, issued October 28, 2003, class 36)
and approximately 600
other AIG-related marks. Complainant
has used the AIG mark and its related marks continuously and extensively in
connection with its insurance and financial
services business since 1968 and
1978 respectively. Thus, Complainant’s
marks are well known to the public.
Complainant
owns registrations for the <aig.com>, <accessaig.com>,
<aigannuity.com>, <aig.info>, <aigag.com>,
<aigdirect.com>, <aigsunamerica.com>, <aigonline.com>, and
<aigtechnologies.com> domain names, where consumers
can access
Complainant’s services online.
Respondent
registered the disputed domain names <aigtoday.com> on January 16,
2004. Respondent registered the <aigaccess.com>
and <aigannunityaccess.com> domain names on February 11,
2004. Respondent is using the domain
names to offer links to annuities and insurance search references.
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.
Complainant has
established that it has rights in the AIG and AIG ANNUITY ACCESS marks through
registration with the United States
Patent and Trademark Office and through
continued use of its marks in commerce for the last thirty-six and twenty-six
years, respectively. 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
domain names are confusingly similar to Complainant’s AIG and AIG ANNUITY
ACCESS marks. The <aigaccess.com>
and <aigannunityaccess.com> domain names are confusingly similar
because the domain names incorporate Complainant’s marks and only deviate with
a different combination
of words or the misspelling of a word. See Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish
identical or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks.”); see also, Teleplace,
Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that
the domain names <teleplace.com>, <tele-place.com>, and
<theteleplace.com>
are confusingly similar to Complainant’s TELEPLACE
trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the disputed
domain names. Due to Respondent’s
failure to respond to the Complaint, the Panel will assume that Respondent
lacks rights and legitimate interests
in the disputed domain names. In fact, once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have such rights to or legitimate interests
pursuant to
Policy ¶ 4(a)(ii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion
because this
information is “uniquely within the knowledge and control of the respondent.”);
see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (finding that once Complainant asserts that Respondent has no rights
or legitimate interests with
respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate
interests in the domain name).
Moreover, where
Respondent does not respond, the Panel may accept all reasonable allegations
and inferences in the Complaint as true.
See Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response,
it is appropriate to accept as true all allegations of the Complaint.”);
see
also Vertical 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).
Respondent is
using the <aigaccess.com>, <aigannunityaccess.com>
and <aigtoday.com> domain names to redirect Internet users to a
website that features advertising for a variety of goods and host a search
engine to
link viewers to a variety of websites, including sites that offer the
same type of services that Complainant offers both in its AIG
offices and
online. Respondent’s use of domain
names that are confusingly similar to Complainant’s AIG and AIG ANNUITY ACCESS
marks to redirect Internet
users interested in Complainant’s products to a
commercial website that offers a search engine unrelated to Complainant’s
products
and services is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and is not a
legitimate
noncommercial or fair use of the domain names pursuant to Policy ¶
4(c)(iii). See Tercent Inc.
v. Lee 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.); see also Geoffrey,
Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that
Respondent’s use of the disputed domain name, a simple misspelling of
Complainant’s
mark, to divert Internet users to a website that featured pop-up
advertisements and an Internet directory, was neither a bona fide
offering of
goods or services nor a legitimate noncommercial or fair use of the domain
name.); see also Nike, Inc. v. Ben Dias, FA 135016 (Nat. Arb.
Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where
Respondent used Complainant’s
mark without authorization to attract Internet
users to its website, which offered both Complainant’s products and those of
Complainant’s
competitors).
Moreover,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <aigaccess.com>, <aigannunityaccess.com>
and <aigtoday.com> domain names.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate
interests in domain names because
it is not commonly known by Complainant’s
marks and Respondent has not used the domain names in connection with a bona
fide offering
of goods and services or for a legitimate noncommercial or fair
use.); see also Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interests where Respondent was not commonly known by the
mark
and never applied for a license or permission from Complainant to use the
trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered three domain names that contain Complainant’s
well-known mark for Respondent’s commercial gain. Respondent’s domain names divert Internet users seeking
Complainant’s AIG or AIG ANNUITY ACCESS marks to Respondent’s commercial
website
through the use of a domain name that is confusingly similar to
Complainant’s marks. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s AIG and AIG ANNUITY
ACCESS marks. Respondent’s practice of diversion,
motivated by commercial gain, constitutes bad faith registration and use
pursuant to Policy ¶
4(b)(iv). See
Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb.
Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain
entire versions of Complainant’s
marks and are used for something completely
unrelated to their descriptive quality, a consumer searching for Complainant
would become
confused as to Complainant’s affiliation with the resulting search
engine website” in holding that the domain names were registered
and used in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website);
see
also 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)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May
18, 2000) (finding that in determining if a domain name has been registered in
bad faith, the Panel
must look at the “totality of circumstances”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive”).
Respondent’s
registration of domain names confusingly similar to Complainant’s marks suggests that Respondent knew of
Complainant’s rights in the AIG and AIG ANNUITY ACCESS marks. Furthermore, the generic or descriptive term
incorporated in the domain names describe Complainant’s business. Thus, the
Panel finds
that Respondent likely chose the <aigaccess.com>, <aigannunityaccess.com>
and <aigtoday.com> domain names based on the distinctive and
well-known qualities of Complainant’s marks.
See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website);
see also State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on Complainant’s goodwill and attract Internet
users to Respondent’s website).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aigtoday.com>, <aigaccess.com> and <aigannunityaccess.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 4, 2004
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