American International Group, Inc. v. santiventures.com c/o jan Wewell
Claim Number: FA0912001298761
Complainant is American International Group, Inc. (“Complainant”), represented by Claudia
W.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <finance-aig.com>, registered with Enom, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010 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@finance-aig.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 <finance-aig.com> domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or legitimate interests in the <finance-aig.com> domain name.
3. Respondent registered and used the <finance-aig.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Group, Inc. (“AIG”), is a worldwide leader in financial and insurance
services. Complainant owns numerous
marks around the world for its AIG mark, including numerous registrations with
the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,151,229 issued
Respondent registered the <finance-aig.com> domain name on
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.
Respondent registered the <finance-aig.com> domain name on
Complainant owns numerous trademark registrations for the
AIG mark with the USPTO (e.g., Reg.
No. 1,151,229 issued
Complainant argues that
Respondent’s <finance-aig.com> domain name is confusingly
similar to Complainant’s AIG mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds the descriptive term “finance,” adds a
hyphen, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a disputed domain name
that adds a generic term with an obvious relationship to Complainant’s business
creates a confusing similarity between the disputed domain name and
Complainant’s mark. See L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding
that combining the generic word “shop” with the complainant’s registered mark
“llbean” does not circumvent the complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22,
2000) (finding that “Respondent does not by adding the common descriptive or
generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or
different marks in which it has rights or legitimate interests, nor does it
alter the underlying [PG&E] mark held by Complainant”). In addition, the Panel finds that the
addition of punctuation marks such as hyphens and the addition of a gTLD are
irrelevant in distinguishing a disputed domain name from a registered
mark. See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any
rights or legitimate interests in the disputed domain name. Once a prima facie case has been established by Complainant, the burden
then shifts to Respondent to demonstrate its rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c). The Panel finds that Complainant has
adequately established a prima facie
case in these proceedings. Since
Respondent has failed to respond to the allegations against it, the Panel may
assume that Respondent lacks any rights or legitimate interests in the disputed
domain name. See Intel Corp. v. Macare, FA
660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must
first make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to
show it does have rights or legitimate interests.”); see also Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant contends that Respondent is neither commonly
known by nor licensed to register the disputed domain name.
The Panel finds that registrant’s WHOIS information demonstrates that
Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii),
Respondent lacks rights and legitimate interests in the disputed domain
name. See Instron Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the
registrant of the disputed domain names and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Respondent’s disputed domain name resolves to a website that offers
high-yield investing schemes that directly compete with Complainant’s business
in the financial industry. The Panel
finds that Respondent’s competing use of the disputed domain name does not
represent 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).
In addition, Respondent’s disputed domain name resolves to a
website that imitates itself as being
associated with Complainant. This
imitation is referred to as “passing off.”
The Panel finds that Respondent’s attempt to pass itself off as an
entity associated with Complainant is further evidence that Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(a)(ii). See
Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8,
2005) (finding the respondent’s attempt to pass itself off as the complainant
by implementing a color scheme identical to the complainant’s was evidence that
respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii)); see
also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither
a bona fide offerings [sic] of goods or services, nor an example of a
legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when
the holder of a domain name, confusingly similar to a registered mark, attempts
to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The
Panel finds that Respondent’s registration and use of the disputed
domain name to operate a website that attempts to create the impression of
being associated with Complainant and offer a high-yield investment scheme in direct
competition with Complainant constitutes a disruption of Complainant’s business
and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Jerie
v. Burian, FA
795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent
registered and used the <sportlivescore.com> domain name in order to
disrupt the complainant’s business under the LIVESCORE mark because the
respondent was maintaining a website in direct competition with the
complainant); see also DatingDirect.com Ltd. v. Aston,
FA 593977 (Nat. Arb. Forum
Respondent is using the disputed domain name in order to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s AIG mark. Respondent offers a high-yield investment scheme in direct competition with Complainant, which is further evidence of bad faith. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds this use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); 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 the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Lastly, Complainant contends that Respondent is using the disputed domain name to pass
itself off as Complainant by prominently displaying a confusingly similar
version of Complainant’s AIG mark on Respondent’s commercial website.
The Panel finds that this constitutes bad faith use and registration pursuant
to Policy ¶ 4(a)(iii).
See Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that the disputed domain name was registered and used in bad faith
where the respondent hosted a website that “duplicated Complainant’s mark and
logo, giving every appearance of being associated or affiliated with
Complainant’s business . . . to
perpetrate a fraud upon individual shareholders who respected the goodwill
surrounding the AIG mark”); see also Target
Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum
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 <finance-aig.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 28, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum