national arbitration forum

 

DECISION

 

American International Group, Inc. v. Domain Adminstration Limited c/o William Vaughan

Claim Number: FA0711001106369

 

PARTIES

 

Complainant is American International Group, Inc. (“Complainant”), 70 Pine Street, New York, NY 10270.  Respondent is Domain Adminstration Limited c/o William Vaughan (“Respondent”), P.O. Box 4098, Springfield, 4300, AU.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <americangenerallifeinsurance.com>, registered with Enom, Inc.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2007.

 

On November 6, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <americangenerallifeinsurance.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 November 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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@americangenerallifeinsurance.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 18, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <americangenerallifeinsurance.com> domain name is confusingly similar to Complainant’s AMERICAN GENERAL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <americangenerallifeinsurance.com> domain name.

 

3.      Respondent registered and used the <americangenerallifeinsurance.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, American International Group, Inc., is among the largest international insurance and investment companies in the world.  Since at least as early as 1926, Complainant, through its member companies and predecessors-in-interest, has used the mark AMERICAN GENERAL in connection with insurance and financial services.  Complainant has sought and obtained trademark registrations for the AMERICAN GENERAL mark in the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,864,984 issued July 20, 2004; Reg. No. 2,642,835 issued October 29, 2002; and Reg. No. 803,239 issued February 1, 1966).  Complainant also operates websites at the <americangeneral.com>, <agfinance.com>, and <aigag.com> domain names.

 

Respondent registered <americangenerallifeinsurance.com> on October 2, 2003.  The disputed domain name currently resolves to a website displaying links to various providers of life and health insurance that are directly competitive with Complainant.

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the AMERICAN GENERAL mark through its registration with the USPTO, which satisfy the requirement of Policy ¶ 4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Complainant contends that Respondent’s disputed domain name is confusingly similar to its mark.  Respondent’s <americangenerallifeinsurance.com> domain name includes the entirety of Complainant’s mark adding only the generic terms “life” and “insurance,” which directly relate to Complainant’s business, and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that spaces are impermissible and a generic top-level domain, such as “.com,” “.net,” “.biz,” or “.org,” is required in domain names.  Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.  See American Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business);  see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights to or legitimate interests in the disputed domain name.  The Panel finds that Complainant has established a prima facie case in the matter at hand.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). 

 

Respondent has failed to submit a response to the Complaint.  Therefore, the Panel is entitled to presume that Respondent lacks all rights and legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also American 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.”).  Nonetheless, the Panel will examine the record to determine if Respondent has any rights or legitimate interests in the <americangenerallifeinsurance.com> domain name pursuant to Policy ¶ 4(c).

 

The disputed domain name, <americangenerallifeinsurance.com>, currently resolves to a website displaying links to various providers of life and health insurance that are directly competitive with Complainant.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Complainant contends that Respondent is not authorized to use Complainant’s AMERICAN GENERAL mark in any way and is not commonly known by the <americangenerallifeinsurance.com> domain name.  Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the <americangenerallifeinsurance.com> domain name.  Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in the domain name in accordance with 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered and used the disputed domain name with knowledge of Complainant’s AMERICAN GENERAL mark.  Because the resulting website advertises services so similar to those offered by Complainant and absent evidence to the contrary, the Panel agrees with Complainant’s contention and finds this conduct to be further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”) see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”).

 

The disputed domain name, <americangenerallifeinsurance.com>, currently resolves to a website displaying links to various providers of life and health insurance that are directly competitive with Complainant.  The Panel finds such use to establish that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing commercial links to the websites of the complainant’s competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Moreover, Respondent is presumed to be benefiting through the use of click-through fees from these links to Complainant’s competitors.  Internet users searching for Complainant’s AMERICAN GENERAL mark would easily be confused by the disputed domain name, which results in additional traffic to Respondent’s websites.  The Panel finds such confusion for commercial gain to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).

 

The Complainant has satisfied Policy ¶ 4(a)(iii). 

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <americangenerallifeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  December 31, 2007

 

 

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