American International Group, Inc. v. Lobsang Marques a/k/a AIG Fincancial Guarantee Corp.
Claim Number: FA0210000126832
Complainant is American International Group, Inc., New York, NY (“Complainant”) represented by Claudia Werner. Respondent is Lobsang Marques a/k/a AIG Fincancial Guarantee Corp., Key Biscayne, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aigfinancial.net>, registered with eNom.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 2, 2002; the Forum received a hard copy of the Complaint on October 7, 2002.
On October 8, 2002, eNom confirmed by e-mail to the Forum that the domain name <aigfinancial.net> is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 October 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 2002, 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 email@example.com by e-mail.
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 November 22, 2002, 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 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 ICANN Policy, ICANN 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
The <aigfinancial.net> domain name is confusingly similar to Complainant's AIG mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered and used the disputed domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant, American International Group, Inc., holds numerous trademark registrations with the United States Patent and Trademark Office for AIG (Reg. Nos. 1,151,229; 1,273,845; 1,172,557; and 1,851,675). In addition, Complainant holds more than 380 registrations for its mark in some 103 countries around the world. Complainant also has a presence on the Internet. Complainant holds the registration for <aigfinancial.com> and <aig.com>. Complainant uses the AIG mark in relation to its wide variety of insurance and financial services. Complainant has invested extensively in promoting the goodwill associated with the AIG mark. Complainant spends millions of dollars in advertising and promoting goods and services under the AIG mark. In 2001, Complainant’s net income was $5.36 billion and revenues were $62.4 billion.
Respondent registered the disputed domain name on May 1, 2002. Respondent’s website displays a banner that states “AIG FINANCIAL, AIGFINANCIAL.COM, Coming soon, firstname.lastname@example.org.” Consumers accessing Respondent’s website are instructed to go to Complainant’s website, indicating to the user that Respondent is somehow affiliated with Complainant. Respondent does not have a license from Complainant to use the AIG mark.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 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 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 established in this proceeding that it has rights to the AIG mark through registration with the United States Patent and Trademark Office as well as by its various registrations throughout the world.
The domain name registered by Respondent, <aigfinancial.net>, is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire AIG mark and merely adds the descriptive term “financial” to the end. The term “financial” is regularly associated with Complainant; therefore, it does not add any distinctive qualities to the disputed domain name. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
When Complainant presents a prima facie case as to Complainant’s allegations against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent did not respond; therefore the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); 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 Respondent’s failure to reply to the Complaint).
The facts permit a finding that Respondent is using a domain name that is confusingly similar to Complainant’s AIG mark in order to cause Internet user confusion and divert users who are interested in Complainant’s goods and services to Respondent’s website. An Internet user accessing Respondent’s website finds “AIG FINANCIAL, coming soon, email@example.com.” This text is highly likely to confuse Internet users as to the source and affiliation of the website. Therefore, Respondent is using a confusingly similar domain name in order to cause confusion for the Internet user and therefore, Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Furthermore, based on the well-known status of Complainant’s mark throughout the world it is unlikely that Respondent can be commonly known by a similar mark. Therefore without any evidence from Respondent establishing that it is commonly known as AIG FINANCIAL or <aigfinancial.net> no proof is before the Panel that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fact that Respondent references Complainant’s domain name on its own website, it can be inferred that Respondent has actual knowledge of Complainant’s AIG mark. Registration of a domain name that incorporates Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).
Respondent is using a domain name that is confusingly similar to Complainant’s AIG mark and identical to Complainant’s domain name. Respondent references Complainant’s mark at its website, thereby causing confusion as to the source, sponsorship and affiliation of Respondent’s domain name. It can be inferred that Respondent is using the resulting Internet user confusion to its economic advantage and is thereby engaging in bad faith use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion"); 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 Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <aigfinancial.net> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 6, 2002.
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