American International Group, Inc. v.
Walter Busby d/b/a AIG Mergers and Acquisitions
Claim
Number: FA0304000156251
Complainant is
American International Group, Inc., New York, USA (“Complainant”)
represented by Claudia Werner Stangle. Respondent is Walter Busby
d/b/a AIG Mergers and Acquisitions, Paris, FR (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aig-ma.com>, registered with Go Daddy
Software, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 29, 2003; the Forum received a hard copy of the
Complaint on April 30, 2003.
On
April 30, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <aig-ma.com> is registered with Go Daddy Software,
Inc. and that Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
April 30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of May
20, 2003 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@aig-ma.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
May 27, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 the 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 assertions:
1. Respondent’s <aig-ma.com>
domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or
legitimate interests in the <aig-ma.com> domain name.
3. Respondent registered and used the <aig-ma.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, American
International Group, Inc., has registered the AIG mark (an acronym for its
company name) in over 100 countries worldwide, including the United States (e.g.,
U.S. Reg. No. 1,151,229, registered on April 14, 2003) and France (Reg. No.
94,538,838, registered on October 5, 1994). Complainant has operated under the
AIG mark since as early as 1968 to distinguish its insurance and financial
services, including mergers and acquisitions services, mutual and investment
fund services, interest rate and currency swaps, commodities trading and
investment banking. Complainant has extensively promoted its AIG mark through
various media, such as print advertisements, radio advertisements, television
commercials and on the Internet at the <aig.com> and <aigonline.com>
domain names. Relevant to this dispute Complainant has registered a logo
incorporating the AIG mark consisting of a blue background square with white
“AIG” lettering (U.S. Reg. No. 1,851,675).
Respondent,
Walter Busby d/b/a AIG Mergers and Acquisitions, registered the <aig-ma.com>
domain name on February 10, 2003, and is not licensed or authorized to use
Complainant’s AIG mark for any purpose. Previously, the header of Respondent’s
homepage and each embedded webpage at the disputed domain name included Complainant’s
registered AIG logo and displayed the wording “Mergers and Acquisitions.”
Respondent advertised its mergers and acquisitions experience in a manner that
gave the impression to Internet users that they had reached a domain name
affiliated with Complainant. Respondent also included Complainant’s AIG mark
into its metadata for its website, making it highly likely that consumers
searching for Complainant online would be directed to Respondent’s website and
domain name.
On February 26,
2003, one of Complainant’s customers contacted the Senior Vice President of
Complainant’s Mergers and Acquisitions Division. This customer had been
contacted by a Mr. David Goodman, who represented himself as an agent for
Complainant, to discuss the purchase or swap of some shares the customer was
holding. This customer was directed to look at the <aig-ma.com>
domain name, and contacted Complainant when he noted that the disputed domain
name differed from the actual web address for Complainant’s Mergers and
Acquisitions Division. Mr. David Goodman also gave this customer a facsimile
number of +33 1 5343 9292, Respondent’s facsimile number, leading the Panel to
find that Mr. Goodman was at a minimum acting on behalf of Respondent in his
communications. Complainant corrected this customer’s misapprehensions,
informed him that the disputed domain name was in no way associated with
Complainant, and sent a cease and desist letter to Respondent. In response to this cease and desist letter,
dated March 3, 2003, Respondent admitted to using Complainant’s mark in an
electronic format at the <aig-ma.com> domain name. The evidence
before the Panel indicates that the disputed domain name is part of a broader
scheme by Respondent and its associates to defraud a number of Australian shareholders
of Cita Biochemical, Inc., in which Respondent and its associates used not only
the <aig-ma.com> domain
name, but also counterfeit stationary and documents bearing the AIG logo to
give the impression of operating on behalf of Complainant.
Currently,
Internet users attempting to reach the disputed domain name reach a website
which simply states that “You are not authorized to view this page.”
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.
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 has
established rights in the AIG mark through registration of the mark with the
appropriate governmental agencies worldwide, as well as via widespread and
continuous use of the mark in commerce.
Respondent’s <aig-ma.com>
domain name is confusingly similar
to Complainant’s AIG mark. The Panel finds that Respondent deliberately
registered a domain name that incorporates Complainant’s AIG mark with the
letters “ma” to signify “Mergers and Acquisitions.” Strictly analyzing the text
of the disputed domain name, the mere addition of the letters “ma” does not
change the fact that the dominant feature of the domain name remains
Complainant’s AIG mark. See Kelson
Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that
<kelsonmd.com> is identical or confusingly similar to Complainant’s federally
registered service mark, “Kelson”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that adding the suffixes "502" and "520" to the ICQ
trademark does little to reduce the potential for confusion).
Accordingly, the
Panel finds that the <aig-ma.com> domain name is confusingly similar to Complainant’s AIG mark under Policy
¶ 4(a)(i).
Respondent used
the disputed domain name to impersonate Complainant and its services. The <aig-ma.com>
domain name itself incorporates Complainant’s registered word mark, and the
website associated with the domain name duplicated Complainant’s registered
logo. Even the metadata associated with the disputed domain name incorporated
Complainant’s mark. In effect, Respondent attempted to pass itself off as
Complainant online. Such blatant unauthorized use of Complainant’s mark is
evidence that Respondent has no rights or legitimate interests in the disputed
domain name. 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<aig-ma.com> domain name
under Policy ¶ 4(a)(ii).
The facts before
the Panel clearly demonstrate that Respondent was well aware of Complainant,
Complainant’s mark, and the goodwill surrounding that mark when it registered
the disputed domain name. Registration of a domain name with actual knowledge
of a trademark holder’s rights in a mark is strong evidence that the domain name
was registered in bad faith. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); see also Albrecht
v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration
in bad faith based where there is no reasonable possibility, and no evidence
from which to infer that the domain name was selected at random since it
entirely incorporated Complainant’s name).
Following its
registration of the disputed domain name, Respondent proceeded to host a
website that duplicated Complainant’s mark and logo, giving every appearance of
being associated or affiliated with Complainant’s business. Respondent was not
authorized to use Complainant’s marks, and admitted as much when sent a
cease-and-desist letter by Complainant. In a nutshell, Respondent used the
disputed domain name to perpetrate a fraud upon individual shareholders who
respected the goodwill surrounding the AIG mark. This is evidence that
Respondent used the disputed domain name in bad faith. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222
(WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com
Official Home Page” gave consumers the impression that Complainant endorsed and
sponsored Respondent’s website, and that such use constituted bad faith).
The Panel thus
finds that Respondent registered and used the <aig-ma.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aig-ma.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 30, 2003
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