American International Group, Inc. v. Charmian, Ltd.
Claim Number: FA0910001291416
Complainant is American
International Group, Inc. (“Complainant”), represented by Claudia W.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aigsurety.com>, registered with Directnic, Ltd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2009.
On October 27, 2009, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <aigsurety.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd 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 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 2009 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@aigsurety.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 24, 2009, 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 <aigsurety.com> domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or legitimate interests in the <aigsurety.com> domain name.
3. Respondent registered and used the <aigsurety.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Group, Inc., provides various financial and insurance services. Complainant operates in over 130 different countries under its AIG mark. Complainant has used this AIG mark since 1968. Complainant holds numerous trademark registrations for its AIG mark throughout the world, such as with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,151,229 issued April 14, 1981) and with the United Kingdom Patent Office (“UKPO”) (e.g., Reg. No. 1,096,205 issued March 20, 1985).
Respondent, Charmian, Ltd., registered the <aigsurety.com> domain name on March 24, 2006. The disputed domain name resolves to a website that offers financial and insurance services that compete with Complainant’s 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 its AIG mark through its
registrations of the mark with the USPTO (e.g., Reg. No. 1,588,200 issued April
14, 1981) and the UKPO (e.g., Reg. No. 1,096,205 issued March 20, 1985). The
Panel finds that each of Complainant’s trademark registration is sufficient to
establish rights under Policy ¶ 4(a)(i).
See The Royal Bank of Scot. Group plc,
Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o
C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that
registration of the PRIVILEGE mark with the
Complainant asserts that Respondent’s <aigsurety.com>
domain name is confusingly similar to Complainant’s AIG mark. The disputed domain name contains
Complainant’s entire AIG mark, and simply adds the descriptive term “surety,”
which refers to Complainant’s financial and insurance services, and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds the addition of a descriptive term fails to sufficiently
distinguish the disputed domain name from Complainant’s mark. See Miller
Brewing
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <aigsurety.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the 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).
Complainant contends that Respondent is not commonly known
by the <aigsurety.com> domain name under Policy ¶ 4(c)(ii). The pertinent WHOIS
information identifies the registrant as “Charmian, Ltd.” This
information suggests that Respondent is not commonly known by the disputed
domain name and there is no information in the record to suggest
otherwise. Thus, the Panel finds that Respondent is not commonly known by
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not
commonly known by the <lilpunk.com> domain name as there was no evidence
in the record showing that the respondent was commonly known by that domain
name, including the WHOIS information as well as the complainant’s assertion that
it did not authorize or license the respondent’s use of its mark in a domain
name); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969
(Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Moreover, Respondent uses the <aigsurety.com> domain name to resolve to a website that provides finance and insurance services that compete with Complainant’s services. The Panel finds Respondent’s use of the confusingly similar disputed domain name for this purpose is not 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 Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). Respondent’s <aigsurety.com> domain name resolves to a website offering financial and insurance services which compete with Complainant’s services. Internet users interested in Complainant and Complainant’s financial and insurance services may instead purchase those services from Respondent because of Respondent’s use of a confusingly similar disputed domain name. The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s financial and insurance services business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent attempts to commercially profit from Internet
users’ confusion as to Complainant’s sponsorship or affiliation with the <aigsurety.com> domain name and resolving website. Respondent sells financial and insurance
services that compete with Complainant’s services, and sells those services on
a website resolving from the confusingly similar disputed domain name. The Panel finds Respondent’s use of the
disputed domain name constitutes bad faith registration and use under Policy ¶
4(b)(iv). See Velv, LLC v. AAE, FA
677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see
also 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).”).
The Panel finds 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 <aigsurety.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 8, 2009
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