American International Group, Inc. v. AIG-Pro c/o Alvin Givens
Claim Number: FA0606000730318
Complainant is American International Group, Inc. (“Complainant”), represented by Caroline L. Stevens, Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is AIG-Pro c/o Alvin Givens (“Respondent”), St. Louis, MO 95296.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aig-pro.com>, registered with Enom, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 13, 2006.
On June 13, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aig-pro.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2006 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@aig-pro.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
After the appointment of the Panel, on or about July 14, 2006, the Forum received an e-mail addressed to the Forum, without any evidence that the e-mail was served upon Complainant. The e-mail stated as follows: “I do not open attachments for security reasons. If you want to own this domain name, I advise you give me your best offer as you are not the only ones who want to own this domain name, but I will not just give it to you if that’s what you want to happen. Send me your best offer and I will decide if the offer is good enough.” The Panel has considered this e-mail to determine its effect on this proceeding. No exceptional circumstances are shown by Respondent for failure to comply with the time requirements of UDRP proceedings. See Rules for Uniform Domain Name Dispute Resolution Policy (hereafter Rules), Rule 14. None of the requirements concerning the contents of a response are addressed or appear in this e-mail. See Rules, Rule 5. The e-mail simply demands a resolution not permitted by the Policy or Rules. When a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirements under the Rules the Panel is instructed to draw such inferences as it considers appropriate. Rules, Rule 14(b). The Panel finds under the facts and circumstances of this case, that the Respondent has filed no response as permitted by the Policy and Rules and is found to be in default. See Rules, Rule 14.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aig-pro.com> domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or legitimate interests in the <aig-pro.com> domain name.
3. Respondent registered and used the <aig-pro.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Group, Inc., has continuously used the AIG mark in connection with insurance and financial services since 1968. Complainant is one of the leading providers of insurance and financial services and has operations in over 130 countries worldwide. Complainant operates a website at the <aig.com> domain name.
Complainant owns around 800 trademark registrations for the AIG mark around the world. Complainant has registered the AIG mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,151,229 issued April 14, 1981; Reg. No. 1,273,845 issued April 10, 1984; Reg. No. 1,851,675 issued August 30, 1994; Reg. No. 2,320,184 issued February 22, 2000; Reg. No. 2,840,342 issued May 11, 2004).
Respondent registered the <aig-pro.com> domain name on September 30, 2005. Respondent’s domain name resolves to a website providing financial and insurance services similar to those Complainant offers under its AIG mark. Respondent is offering investment opportunities for Internet users and guarantees a 28.8% return in 60 days. Complainant alleges that Respondent’s website might be fraudulent because it could not find any business records for Respondent’s business.
Complainant claims it sent Respondent several cease-and-desist letters, starting with one on November 15, 2005. On January 31, 2006, Respondent replied by e-mail and asked Complainant if the posting of a disclaimer would resolve the matter. Complainant replied that a disclaimer would not be enough to “overcome the likelihood of consumer confusion” unless Respondent provided Complainant with more information about Respondent’s business. On February 14, 2006, Respondent replied via e-mail and asked Complainant if it wanted the domain name. On February 28, 2006, after Complainant requested the transfer of the <aig-pro.com> domain name, Respondent asked for $12,115, representing his out-of-pocket registration costs as well as his lost business revenue for three months. On March 8, 2006, Complainant replied to Respondent with a counter-offer of $100. Respondent did not reply to this request.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 demonstrated its rights in the AIG mark
through registration of the mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see
also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006)
(“Complainant has established rights in the MICROSOFT mark through registration
of the mark with the USPTO.”).
Moreover, Respondent’s <aig-pro.com> domain name is confusingly similar to Complainant’s AIG mark because the disputed domain name incorporates the registered mark in its entirety and simply adds a hyphen and the term “pro.” In McClatchy Mgmt. Serv., Inc. v. Purdy, FA 165944 (Nat. Arb. Forum Aug. 12, 2003), the panel found the respondent’s <startribunenews.com> domain name to be confusingly similar to the complainant’s STAR TRIBUNE mark because “the mere addition of the term ‘news’ to the end of the domain name is a meaningless distinction, intended to avoid a direct copy of the actual name.” Because Respondent also merely adds a term to Complainant’s mark in the domain name, as well as a hyphen, Respondent has failed to sufficiently distinguish the <aig-pro.com> domain name from the AIG mark and therefore, the disputed domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <aig-pro.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <aig-pro.com>
domain name. See Branco do
Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its
default, Respondent has not contested the allegation . . . that the Respondent
lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no
other reason for the Respondent having registered <bancodobrasil.com> but
the presumably known existence of the Complainant´s mark BANCO DO BRASIL”); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Despite the WHOIS information listing the registrant of the
<aig-pro.com> domain name as “AIG-Pro c/o Alvin Givens,” there is
no other evidence in the record suggesting that Respondent is commonly known by
the <aig-pro.com> domain name.
Complainant alleges that it attempted to find business records of
Respondent’s business but could not find anything, and that it even asked
Respondent to provide Complainant with information on Respondent’s business, to
which Respondent simply asked if Complainant wanted the <aig-pro.com>
domain name for itself. Consequently,
Respondent has not established rights or legitimate interests in the <aig-pro.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004
(Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame
of Complainant’s mark, Respondent does not have rights or legitimate interests
in the <qwestcommunications.net> domain name, despite the presence of the
word ‘qwest’ in the domain name registration WHOIS information.”); see also
Dana Corp. v. Safineh Co., FA 222043 (Nat. Arb. Forum Mar. 1, 2004) (“The
<dana-co.org> domain name is registered, in part, to ‘Dana Co.’ Because of Complainant’s extensive holding
of international registrations of the DANA mark, including Respondent’s
territory of Iran, the panel may infer that Respondent is not commonly known as
‘Dana’ or ‘Dana Co.’ despite the WHOIS domain name registration information
pursuant to UDRP Policy ¶ 4(c)(ii).”).
Furthermore, Respondent’s <aig-pro.com> domain
name, which is confusingly similar to Complainant’s AIG mark, resolves to
Respondent’s own website where Respondent offers competing financial
services. In Gardens Alive, Inc. v. D&S Linx,
FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel found that the respondent’s
use of a domain name to divert Internet users to a website selling goods and
services similar to the services the complainant offered was not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). In this case, Respondent is also diverting
Internet users seeking Complainant’s financial services to its own website
providing similar services. Therefore,
Respondent is not using the <aig-pro.com> domain name in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See DLJ Long Term Inv.
Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
In addition, by redirecting Internet users seeking
Complainant’s financial and insurance services to a competing financial
website, Respondent has registered and used the <aig-pro.com>
domain name in order to disrupt Complainant’s business in violation of Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding that the respondent registered the domain name in question to disrupt
the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Respondent’s registration and use of the disputed domain
name also constitutes bad faith under Policy ¶ 4(b)(iv), because Respondent is
using the disputed domain name to operate a financial services website offering
similar services as Complainant offers under its AIG mark. In TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001), the
respondent was using the <erarealty.com> domain name, which the panel
found was confusingly similar to the complainant’s ERA mark, to redirect
Internet users to its own website offering competing real-estate services. The panel found that such use constituted
bad faith registration and use under Policy ¶ 4(b)(iv), because the respondent
was intentionally attracting Internet users to a direct competitor of the
complainant for commercial gain. Id. Because Respondent is also attempting to
attract Internet users to a website in direct competition with Complainant for
commercial gain, Respondent has registered and used the <aig-pro.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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 Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
The Panel concludes that Complainant has satisfied 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 <aig-pro.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 27, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum