American International Group, Inc. v. Kevin Daste
Claim Number: FA0708001055078
Complainant is American International Group, Inc. (“Complainant”), represented by Claudia W. Stangle, Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is Kevin Daste (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aigpr.com>, registered with Network Solutions, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 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@aigpr.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <aigpr.com> domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or legitimate interests in the <aigpr.com> domain name.
3. Respondent registered and used the <aigpr.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Group, Inc., is the world’s leading international insurance and financial services organization. Complainant has used the AIG mark in connection with its financial services since as early as 1968. Complainant spends millions of dollars each year in promoting its services under the AIG mark, and currently advertises during major televised sporting events, business news programs, and in widely circulated magazines. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AIG mark (Reg. No. 1,151,229 issued April 14, 1981).
Complainant previously registered the <aigpr.com> domain name on June 7, 1996, and used the domain
name in connection with life insurance services in
Respondent took control of the <aigpr.com> domain name on July 8, 2007. Respondent’s disputed domain name now resolves to a website that prominently displays Complainant’s AIG mark and features links to various third-party websites, some of which offer services in direct competition with Complainant’s financial services.
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 asserts rights in the AIG mark through its
registration of the mark with the USPTO.
The Panel finds that this registration is sufficient to establish
Complainant’s rights in the mark pursuant to 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.”); see
also
Respondent’s <aigpr.com> domain name is confusingly similar to
Complainant’s AIG mark, as the disputed domain name incorporates the entire mark
and merely adds the letters “pr” to the mark.
These letters constitute an abbreviation for “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <aigpr.com> domain name. Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving this allegation, and once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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).
Respondent’s failure to answer the Complaint allows the Panel to presume that Respondent lacks rights and legitimate interests in the disputed 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). However, the Panel will still examine the record to determine if Respondent has rights or legitimate interests in the <aigpr.com> domain name pursuant to Policy ¶ 4(c).
Respondent’s <aigpr.com>
domain name resolves to a website that features Complainant’s AIG mark and
displays links to third-party websites, some of which are in direct competition
with Complainant. Respondent likely earns
click-through fees when Internet users click on these links. Such use does not qualify as either 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), and indicates that Respondent lacks rights and legitimate interests
in the <aigpr.com> domain
name. 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 Or. State Bar v. A Special Day,
Inc., FA 99657 (Nat. Arb. Forum Dec. 4,
2001) (“Respondent's advertising of legal services and sale of law-related
books under Complainant's name is not a bona fide offering of goods and
services because Respondent is using a mark confusingly similar to the
Complainant's to sell competing goods.”).
There is nothing in the record to suggest, and Respondent’s WHOIS information does not indicate, that Respondent is commonly known by the <aigpr.com> domain name. In addition, Complainant has never given Respondent permission to use its AIG mark for any purpose. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
Furthermore, Complainant previously held a registration for
the <aigpr.com> domain name, yet
was unable to renew the registration due to Respondent’s backordering of the
disputed domain name. This is further
evidence that Respondent lacks rights and legitimate interests in the <aigpr.com> domain name under
Policy ¶ 4(a)(ii). See RH-Interactive Jobfinance
v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003)
(“Complainant’s prior registration of the domain name, coupled with
Respondent’s failure to respond to this dispute, is evidence that Respondent
has no rights or legitimate interests in the domain name pursuant to Policy
4(a)(ii).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Servs., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the
same domain name is a factor in considering the respondent’s rights or
legitimate interests in the domain name).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Complainant further alleges that Respondent registered and is using the <aigpr.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). The Panel agrees. Respondent is using the disputed domain name to redirect Internet users to a website that features Complainant’s mark and displays links in direct competition with Complainant. Such use constitutes a disruption of Complainant’s business and indicates that Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also 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).
As mentioned previously, Respondent’s <aigpr.com> domain name, which is confusingly similar to Complainant’s AIG mark, resolves to a website featuring links to websites in direct competition with Complainant, and the Panel presumes that Respondent benefits commercially when Internet users click on these links. Respondent is thus capitalizing on the likelihood that users will be confused as to the source of the <aigpr.com> domain name and Complainant’s affiliation with the disputed domain name. This is further evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
In addition, Complainant’s previous registration of the <aigpr.com> domain name also indicates Respondent’s bad faith registration and use of the disputed domain name. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
The Panel finds that 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 <aigpr.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 17, 2007
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