American International Group, Inc. v.
Lobsang Marques a/k/a AIG Fincancial Guarantee Corp.
Claim Number: FA0210000126832
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@aigfinancial.net 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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, info@aigfinancial.net.” 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.
DISCUSSION
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, info@aigfinancial.net.” 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.
DECISION
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.
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page