American International Group, Inc. v.
Georges Hneich
Claim Number: FA0505000479518
PARTIES
Complainant
is American International Group, Inc. (“Complainant”), represented by Claudia W. Stangle, Two Prudential
Plaza, Suite 4900, Chicago, IL, 60601.
Respondent is Georges Hneich (“Respondent”),
8603 Westwood Ctr., Ste. 240, Vienna,
VA, 22182.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aig-inc.us>,
registered with Melbourne It d/b/a Internet Names World Wide.
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 May 18, 2005; the Forum received a hard copy of the Complaint May
19, 2005.
On
May 18, 2005, Melbourne It d/b/a Internet Names World Wide confirmed by e-mail
to the Forum that the domain name <aig-inc.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 verified that
Respondent is bound by the Melbourne It d/b/a Internet Names World Wide
registration agreement and thereby has 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
May 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”) setting a deadline of May 19,
2005, 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
June 15, 2005, 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 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. The domain name that Respondent
registered, <aig-inc.us>, is confusingly similar to Complainant’s
AIG mark.
2. Respondent has no rights to or legitimate
interests in the <aig-inc.us> domain name.
3. Respondent registered or used the <aig-inc.us>
domain name in bad faith.
B.
The papers in the file suggest that Respondent filed a late Response that did
not comply with the rules.
FINDINGS
Complainant, American International
Group, Inc., through its member companies, uses the AIG mark in connection with
its various financial and insurance services, including export credit
insurance, investment services and commodities trading.
Complainant has continuously used the AIG
mark in commerce since 1968 in connection with its various financial
services. Complainant’s revenues in
2003 totaled over $81 billion and Complainant annually spends millions of
dollars in advertising and promoting its services under the AIG mark.
Complainant registered its AIG mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 1,151,229
issued April 14, 1981; 1,273,845 issued April 10, 1984 and 1,851,675 issued
August 30, 1994).
Respondent registered the <aig-inc.us>
domain name on July 14, 2003. The
disputed domain name resolves to a website promoting Respondent’s competing
“international trading services,” specifically, commodity trading services.
Nothing in any late-filed papers
submitted to the Panel overcomes the established proof submitted by Complainant
and nothing raises an issue that would require a different result had all
filings been timely.
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 substantive Response, the Panel shall
decide this administrative proceeding on the basis of the Complainant's
unchallenged representations pursuant to Paragraphs 5(f), 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the 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.
Using extrinsic proof in this proceeding,
Complainant established rights in the AIG mark through registration of the mark
with the USPTO and through continuous use of the mark in commerce since
1968. See 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. The respondent has the burden of refuting
this assumption); see also 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.”).
The disputed domain name that Respondent
registered, <aig-inc.us>, is confusingly similar to Complainant’s
AIG mark. The disputed domain name
incorporates Complainant’s mark entirely and adds the generic term “inc” (an
abbreviation of “incorporated”) and a hyphen.
The disputed domain name then adds the country code top-level domain
“.us.” Such minor changes are
insignificant and are not enough to distinguish Respondent’s domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the
domain name in dispute contains the identical mark of the complainant combined
with a generic word or term); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000)
(“[T]he use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark.”); see also Tropar Mfg. Co. v.
TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the
addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, the <tropar.us> domain name is
identical to the complainant’s TROPAR mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant proved its rights and alleged
that Respondent has no such rights.
Respondent did not challenge Complaint’s allegations. Therefore, the Panel accepts all reasonable
allegations and assertions set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest
complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertions in this regard.”).
Complainant
also asserted that Respondent lacks rights and legitimate interests in the <aig-inc.us>
domain name and Respondent failed to rebut Complainant’s claims. The Panel finds that Respondent’s failure to
rebut the proof supports the inference that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000)
(finding no rights or legitimate interests where no such right or interest was
immediately apparent to the panel and the respondent did not come forward to
suggest any right or interest it may have possessed).
Furthermore, nothing in the record
indicates that Respondent is the owner or beneficiary of a trade or service
mark that is identical to the <aig-inc.us> domain name pursuant to
Policy ¶ 4(c)(i) or that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(iii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name). On the face of the documents before the Panel, Respondent is
not known by the Complainant’s mark.
Moreover, Respondent is using a
confusingly similar domain name to operate a website that offers services that
compete with Complainant’s commodity trading services. Thus, Respondent’s competitive use of the <aig-inc.us>
domain name is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iv).
See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with the complainant, was not a bona fide offering of goods or services); see
also N. Coast Med., Inc. v. Allegro
Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or
legitimate interests in a domain name that diverted Internet users to the
respondent’s competing website through the use of the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant also alleged that Respondent
acted in bad faith in registering and using a domain name containing
Complainant’s protected mark. Respondent is using the <aig-inc.us>
domain name, which is confusingly similar to Complainant’s AIG mark, to operate
a website that features competing commodity brokerage and trading
services. The Panel finds that such use
constitutes disruption and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
the complainant’s marks suggests that the respondent, the complainant’s
competitor, registered the names primarily for the purpose of disrupting the
complainant’s business).
Because the disputed domain name is
confusingly similar to Complainant’s AIG mark, consumers accessing the domain
name may become confused as to Complainant’s affiliation with the resulting
website. Thus, Respondent’s commercial
use of the <aig-inc.us> domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Furthermore, Respondent registered the <aig-inc.us>
domain name with actual or constructive knowledge of Complainant’s rights in
the AIG mark due to Complainant’s registration of the mark with the USPTO. Moreover, the Panel infers that Respondent
registered the domain name with actual knowledge of Complainant’s rights in the
mark due to the obvious connection between the content featured at Respondent’s
website and Complainant’s business.
Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between the complainant’s mark
and the content advertised on the respondent’s website was obvious, the
respondent “must have known about Complainant’s mark when it registered the
subject domain name”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
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 <aig-inc.us>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 29, 2005.
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page