American International Group, Inc. v. Traverito Traverito
Claim Number: FA0706001011737
Complainant is American International Group, Inc. (“Complainant”), represented by Boris
Umansky, Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is Traverito Traverito (“Respondent”), Crcega 329 4 Planta,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <aiginvestment.com>, registered with Moniker Online Services, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2007.
On June 21, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <aiginvestment.com> domain name 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 June 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 12, 2007 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@aiginvestment.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 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aiginvestment.com> domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or legitimate interests in the <aiginvestment.com> domain name.
3. Respondent registered and used the <aiginvestment.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Group, Inc., is a globally recognized financial and insurance services provider with operations in more than 130 countries. Through its member companies, collectively known under the AIG mark, Complainant offers a variety of investment, banking, and brokerage services, packaged and marketed in both standard and customizable financial product options. In connection with the goods and services advertised under the AIG mark, Complainant has numerous trademark registrations worldwide for the AIG mark, including Reg. No 1,151,229 issued by the United States Patent and Trademark Office (“USPTO”) on April 14, 1981. Complainant has heavily invested in the promotion of the AIG mark, including extensive advertisement in both print and television and sports sponsorships. Complainant also currently maintains a website at the <aig.com> domain name.
The <aiginvestment.com> domain name was registered by Respondent on October 10, 2004. Respondent’s domain name currently resolves to a list of investment-related hyperlinks and to those of other financial services providers.
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.
As set forth by the panel in Expedia, Inc. v. Emmerson, FA 873346
(Nat. Arb. Forum Feb. 9, 2007), “[c]omplainant’s trademark registrations
with the USPTO adequately demonstrate its rights in the mark pursuant to Policy
¶ 4(a)(i).” In
the instant case, the Panel finds Complainant’s registration of the AIG mark
with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant asserts Respondent’s <aiginvestment.com> domain name is confusingly similar to its AIG mark as the combination of a prominently displayed trademark in connection with a general term does not change the overall impression of the mark. The Panel agrees. Respondent’s <aiginvestment.com> domain name makes use of Complainant’s AIG mark in its entirety and the addition of the general term “investment,” a word generally describing the services offered by Complainant, does not sufficiently distinguish the disputed domain name from Complainant’s AIG mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Moreover, Respondent’s use of the generic top-level domain “.com” in the domain name does not assist in distinguishing the <aiginvestment.com> domain name from Complainant’s AIG mark as top-level domains are considered irrelevant under Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Accordingly, the Panel concludes Policy ¶ 4(a)(i) has been satisfied.
Before Respondent is required to put forth evidence demonstrating rights or legitimate interests in the <aiginvestment.com> domain name pursuant to Policy ¶ 4(c), the Complainant must first set forth a prima facie case asserting Respondent’s lack thereof. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations). Finding Complainant has sufficiently met its burden of proof, the Panel considers whether Respondent has any rights or legitimate interests in the disputed domain name.
The lack of a Response permits the Panel to infer Respondent does not have rights or legitimate interests in the <aiginvestment.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). Notwithstanding the absence of a Response, however, the Panel will now determine whether evidence in the record suggests Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The Respondent has put forth no evidence and nothing in the record suggests that Respondent is commonly known by the <aiginvestment.com> domain name. Further, there is nothing to rebut Complainant’s contention that Respondent is not authorized to use Complainant’s AIG mark in any manner and Respondent’s only motivation in using the AIG mark is to exploit the goodwill associated with the mark as a result of Complainant’s marketing efforts. Based on the foregoing, the Panel concludes Respondent is not commonly known by the <aiginvestment.com> domain name under Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the complainant has not licensed or otherwise permitted the respondent to use any of its trademarks, and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the complainant, demonstrate that the respondent lacks rights or legitimate interests in the domain name).
Moreover, use of the <aiginvestment.com>
domain name to resolve to a list of links to third-party investment and
financial service providers, most of which directly compete with Complainant,
does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
the respondent’s diversionary use of the complainant’s marks to send Internet
users to a website which displayed a series of links, some of which linked to
the complainant’s competitors, was not a bona
fide offering of goods or services);
see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s present use of the <aiginvestment.com> domain name to link Internet users to providers of products and services similar to and competing with those offered under Complainant’s AIG mark evidences bad faith registration and use under Policy ¶ 4(b)(iii) through intentional disruption of Complainant’s business via the goodwill Complainant has built up in the mark. See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Further, resolution of the <aiginvestment.com> domain name to a collection of links to Complainant’s competitors also indicates to the Panel that Respondent has exercised bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv) through an attempt to commercially benefit from the fame of Complainant’s AIG mark as users click-through the links displayed on Respondent’s site attempting to reach those goods and services offered by Complainant. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Therefore, the Panel concludes Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aiginvestment.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 30, 2007
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