American International Group, Inc. v. AIG-Services c/o
Nicolas Boulle
Claim Number: FA0706001013505
PARTIES
Complainant is American International Group, Inc. (“Complainant”), represented by Jeffrey
S. David, Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is AIG-Services c/o Nicolas
Boulle (“Respondent”), Global Gateway 4, Rue de la Perle,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aig-services.com>, registered with Enom, Inc.
PANEL
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 21, 2007.
On June 21, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <aig-services.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 25, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 16, 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@aig-services.com by e-mail.
The Response was received in electronic format only on July 16, 2007.
Because no hard copy was received, the National Arbitration Forum has
deemed the Response deficient pursuant to Supplemental Rule 5(b).
On July 20, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Complainant is the world’s leading international insurance and financial services organization, with operations in more than 130 countries and jurisdictions.
Complainant and its member
companies have for many years used the “
To protect the goodwill symbolized by its “AIG” trademark, Complainant has obtained registrations for the mark in the United States Patent and Trademark Office (“USPTO”) and in other jurisdictions worldwide.
Some of the
Respondent registered the <aig-services.com> domain name on December 28, 2006.
The webpage linked to the disputed domain name prominently features Complainant’s “AIG” mark in several places, including in a large logo centered on the page.
Respondent uses the <aig-services.com> domain name to advertise its putative “offshore and international business services,” which services compete directly with the business of Complainant.
The <aig-services.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights to or a legitimate interest in the disputed domain name.
Respondent is not a licensee of Complainant and Respondent does not have authorization from Complainant to use the “AIG” mark or anything confusingly similar to it in a domain name.
Respondent is not commonly known by the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent contends, among other things, that:
Respondent registered the disputed domain name “from NINS” (an
enterprise which Respondent’s WHOIS information
identifies more fully as “Nexus ICT & Network Solutions”).
Respondent is “part of nins.”
Respondent and “nins” registered the disputed domain name and built the
website to which it resolves for an enterprise identified as “AIG Services
Ltd.”
FINDINGS
(1) the domain name registered by Respondent is
confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the same domain name was registered and is being
used by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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:
i.
the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
ii.
Respondent
has no rights or legitimate interests in respect of the domain name; and
iii.
the domain name
has been registered and is being used in bad faith.
Complainant’s registration of its
mark with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.” See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding
that a complainant’s federal trademark registrations for the CHEAPTICKETS and
CHEAPTICKETS.COM marks were adequate to establish its rights in the marks
pursuant to Policy ¶ 4(a)(i)).
With respect to the question of confusing similarity, the <aig-services.com> domain name contains Complainant’s entire AIG mark and merely adds a hyphen, the generic or descriptive term “services,” (which is descriptive of Complainant’s business) and the generic top-level domain “.com.” Whether taken singly or together, these additions do not adequately differentiate the disputed domain name from the AIG mark. As a result, the <aig-services.com> domain name is confusingly similar to the AIG mark for purposes of Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005): “Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD “.com” are insufficient to distinguish Respondent’s domain name from Complainant’s mark.” See also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described a complainant’s products, and of the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark).
We find, therefore, that Complainant has
sufficiently satisfied the proof requirements of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must
first establish a prima facie case that Respondent lacks rights and
legitimate interests in the domain name at issue. Once that is accomplished, the burden shifts
to Respondent to show that it nonetheless does hold rights or legitimate
interests in the domain name at issue.
See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb.
Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii)
requires that a complainant must show that a respondent has no rights to or
legitimate interests in a subject domain name, and that once a complainant
makes this showing, the burden of production shifts to a respondent to rebut
that complainant’s allegations); see also SEMCO Prods., LLC v. dmg world media (
We conclude that Complainant has made the requisite showing. For its part, Respondent’s putative Response to the Complaint does no more than to confirm Respondent’s identity as a proper party to this proceeding. Indeed it does not even address any of the substantive issues raised in the Complaint, and therefore stands as a failure to respond. Therefore, because Respondent has failed even to attempt to refute Complainant’s allegations that Respondent lacks rights to or legitimate interests in the disputed domain name, we are entitled to and do accept all reasonable allegations and inferences set out in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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.”
No further discussion of the issue of Respondent’s rights and interests is required in the circumstances. We note, however, that Complainant alleges, and Respondent does not deny, that Respondent’s website at the <aig-services.com> domain name prominently displays Complainant’s AIG mark within a large logo and advertises “offshore and international business services.” Complainant further asserts, and Respondent does not deny, that these type of services are similar to Complainant’s own financial services, which may confuse the general public and allow Respondent to benefit commercially from its use of Complainant’s mark.
We conclude, therefore, that Respondent’s use of the <aig-services.com> domain name does not represent 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, for example, G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum, Sept. 19, 2002) (finding that, because a respondent employed an infringing domain name to sell prescription drugs, a panel could infer that that respondent was using a pharmaceutical company complainant’s mark to attract Internet users to its website for commercial benefit). See also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000):
The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.
Moreover, although
Respondent’s WHOIS information identifies the registrant of the <aig-services.com> domain name as
“AIG-Services
c/o Nicolas Boulle,” Complainant alleges both that Respondent is not commonly
known by the disputed domain name and that it has not authorized or licensed
Respondent to register a domain name containing its AIG mark. Respondent does not deny these assertions. Accordingly, we are justified in concluding
that Respondent is not commonly known by the <aig-services.com> domain name within the meaning of Policy ¶
4(c)(ii). See Valiant Trust Co. v. Valiant
Trust, FA 844658 (Nat. Arb.
Forum Jan. 11, 2007): “Respondent cannot gain any rights to the ‘Valiant Trust’
name by impersonating the real Valiant Trust (Complainant). In recognition of the lack of evidence
suggesting otherwise, the Panel finds Respondent has not established rights or
legitimate interests pursuant to Policy ¶ 4(c)(ii).” See also
City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004): “Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”
We thus find that Complainant has adequately
satisfied the proof requirements of Policy ¶ 4(a)(ii).
On the record before us, it is evident that Respondent is taking
advantage of the confusing similarity between the <aig-services.com> domain name and
Complainant’s AIG mark in order to profit from the goodwill associated with the
mark because Respondent is redirecting Internet users seeking Complainant’s
financial services to Respondent’s competing website. Many panels have considered such registration
and use to be in bad faith under Policy ¶ 4(b)(iv),
and we agree. See Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith registration and use of a
contested domain name pursuant to Policy ¶ 4(b)(iv) because a respondent and a
complainant were in the same line of business and that respondent was using a
domain name confusingly similar to a complainant’s FITNESS WAREHOUSE mark to
attract Internet users to its <efitnesswarehouse.com> domain name); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where a domain name
resolved to a website that offered products similar to those sold under a
complainant’s famous mark).
In addition, it appears that Respondent registered the <aig-services.com> domain name with at least constructive knowledge of
Complainant’s rights in the AIG trademark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For these reasons, we find that Complainant
has met the proof requirements of Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the relief
requested must be GRANTED.
Accordingly, it is Ordered that the <aig-services.com> domain name be forthwith
TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 2, 2007
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