American International Group, Inc. v.
Ling Shun Shing
Claim Number: FA0310000206399
Complainant is American International Group, Inc. (“Complainant”)
represented by Claudia Stangle, Two Prudential Plaza, Suite 4900,
Chicago, IL 60601. Respondent is Ling
Shun Shing, 138 Yi Xue Yuan Rd.,
Shanghai, 200032, P.R. China (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aigassurance.com> registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 31, 2003; the Forum received a hard copy of the
Complaint on November 3, 2003.
On
November 3, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <aigassurance.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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 6, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 26, 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@aigassurance.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
December 4, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <aigassurance.com>
domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or
legitimate interests in the <aigassurance.com> domain name.
3. Respondent registered and used the <aigassurance.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since at least
as early as 1968, Complainant has used the AIG mark to distinguish its wide
variety of insurance and financial services. Complainant holds a number of
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the AIG mark, including Reg. No. 1,151,229 (registered on April
14, 1981) related to insurance and insurance related services. Complainant also
holds a number of worldwide trademark registrations, including trademark
registrations in China (Reg. Nos. 623,023 and 1,439,869).
Respondent
registered the <aigassurance.com> domain name on September 9,
2002. Respondent is using the disputed domain name to redirect Internet users
to a website that features, inter alia, links to websites offering
quotes for life insurance.
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
demonstrated that it has rights in the AIG mark through its federal trademark
registrations with the USPTO. See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive.
Respondent has the burden of refuting this assumption); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning”).
Complainant
contends that Respondent’s <aigassurance.com> domain name is
confusingly similar to Complainant’s AIG mark because the disputed domain name
appropriates Complainant’s entire mark and adds the generic or descriptive term
“assurance” to the end of the mark. The addition of this generic or descriptive
term does not significantly differentiate the domain name from the mark under
Policy ¶ 4(a)(i) because the term “assurance” relates directly to Complainant’s
business of providing insurance services. See 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); see also L.L. Bean, Inc. v. ShopStarNetwork, FA
95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word
“shop” with Complainant’s registered mark “llbean” does not circumvent
Complainant’s rights in the mark nor avoid the confusing similarity aspect of
the ICANN Policy).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not come forward to contest Complainant’s allegations. Therefore, the Panel
accepts all reasonable allegations and inferences in the Complaint as true. See
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Furthermore,
based on Respondent’s failure to contest the Complaint, the Panel presumes
Respondent lacks all rights to and legitimate interests in the disputed domain
name in accord with Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interests in the domain
name because Respondent never submitted a Response or provided the Panel with
evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately apparent to the Panel and
Respondent did not come forward to suggest any right or interest it may have
possessed).
Respondent is
using the disputed domain name to redirect Internet users to a website that
features, inter alia, links to websites offering quotes for life
insurance. Respondent’s use of the <aigassurance.com> domain name
to compete directly with Complainant in the life insurance field does not
represent 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat.
Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with Complainant, was not a bona fide offering of goods or services); see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“It would be unconscionable to find a bona
fide offering of services in a respondent’s operation of web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business”).
Moreover,
Respondent has offered no proof and there is nothing in the record that
suggests Respondent is commonly known by AIG ASSURANCE or <aigassurance.com>.
Accordingly, the Panel finds that Respondent has failed to demonstrate any
rights to or legitimate interests in the disputed domain name under Policy ¶
4(c)(ii). See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail").
The Panel finds
that Policy ¶ 4(a)(ii) has been established.
Respondent’s use
of a domain name confusingly similar to Complainant’s AIG mark to compete
directly with Complainant’s business in the life insurance arena establishes
Respondent’s registration and use of the <aigassurance.com> domain
name in bad faith because Respondent’s use of the disputed domain name to
attempt to attract Internet users to Respondent’s website for commercial gain
by creating a likelihood of confusion with Complainant’s mark evidences bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also 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).
Furthermore, the
Panel presumes Respondent had actual or constructive knowledge of Complainant’s
rights in the AIG mark when the <aigassurance.com> domain name was
registered because of the similar goods and services offered by Complainant and
Respondent. Respondent’s registration of the disputed domain name, despite
actual or constructive knowledge of Complainant’s rights in the mark, is
evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse")
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aigassurance.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 15, 2003
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