American International Group, Inc. v. The
Life Settlement Company a/k/a Timothy Mattek
Claim
Number: FA0501000411716
Complainant is American International Group, Inc. (“Complainant”), represented by Caroline
L. Stevens, of Leydig, Voit & Mayer Ltd., Two Prudential Plaza,
Suite 4900, Chicago, IL 60601-6780.
Respondent is The Life Settlement
Company a/k/a Timothy Mattek (“Respondent”), 11476
Sundance Lane, Boca Raton, FL 33428.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aiglifeassignments.com>, <aiglifesettlements.com>
and <americangenerallifesettlements.com>, registered with Go
Daddy Software, Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
January 31, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <aiglifeassignments.com>, <aiglifesettlements.com>
and <americangenerallifesettlements.com> are registered with Go
Daddy Software, Inc. and that Respondent is the current registrant of the
names. 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
February 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 23, 2005 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@aiglifeassignments.com,
postmaster@aiglifesettlements.com and
postmaster@americangenerallifesettlements.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aiglifeassignments.com>,
<aiglifesettlements.com> and <americangenerallifesettlements.com>
domain names are confusingly similar to Complainant’s AIG and AMERICAN GENERAL
marks.
2. Respondent does not have any rights or
legitimate interests in the <aiglifeassignments.com>, <aiglifesettlements.com>
and <americangenerallifesettlements.com> domain names.
3. Respondent registered and used the <aiglifeassignments.com>,
<aiglifesettlements.com> and <americangenerallifesettlements.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American International Group, Inc., is the world’s leading international
insurance and financial services organization with operations in more than 130
countries and jurisdictions worldwide.
Complainant has
registered the AIG (Reg. Nos. 1,172,557 issued October 6, 1981; 1,273,845
issued April 10, 1984) and AMERICAN GENERAL (Reg. Nos. 803,239 issued February
1, 1966; 2,864,984 issued July 20, 2004) marks with the United States Patent
and Trademark Office (“USPTO”) and in jurisdictions throughout the world.
Respondent
registered the <americangenerallifesettlements.com> domain name on
September 11, 2004, the <aiglifesettlements.com> domain name on
September 14, 2004 and the <aiglifeassignments.com> domain name on
September 27, 2004. Respondent’s domain
names resolve to an “under construction” website.
On December 7,
2004, Complainant sent a letter to Respondent requesting that Respondent
transfer the disputed domain names immediately. On December 30, 2004, Respondent replied to Complainant’s letter
with e-mail refusing to transfer the domain names but offering to sell the
domain name registrations for $2,750 each.
Respondent later reduced this price to $295 each.
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 and AMERICAN GENERAL marks through registration
of the marks with the USPTO and with trademark authorities worldwide. See
Am. Online, Inc. v. Thomas
P. Culver Enters., D2001-0564 (WIPO June 18, 2001) finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark; see also 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.
Respondent’s <aiglifeassignments.com>,
<aiglifesettlements.com> and <americangenerallifesettlements.com>
domain names are confusingly similar to Complainant’s AIG and AMERICAN
GENERAL marks because the domain names incorporate the marks in their entirety
and add the terms “life settlement” or “life assignment,” which have a strong
association with Complainant’s insurance and financial services business. Such an addition is not enough to overcome a
finding of confusing similarity between Respondent’s domain names and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant combined with a generic word or term; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business.
Furthermore,
the omission of the spaces between the terms of Complainant’s AMERICAN GENERAL
mark as well as the addition of the top-level domain “.com” are insufficient to
negate a finding of confusing similarity under Policy ¶ 4(a)(i). See
Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27,
2002) finding it is a “well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”; see
also Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as true and accurate. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”); see also Bayerische
Motoren Werke AG v. Bavarian AG, FA 110830 (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.
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <aiglifeassignments.com>, <aiglifesettlements.com>
and <americangenerallifesettlements.com> domain names pursuant to
Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name; see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Additionally,
Respondent’s domain names resolve to an “under construction” website. In such circumstances, it cannot be said
that Respondent is making a bona fide offering of goods or services, nor a
legitimate noncommercial or fair use of the domain names. Thus, the Panel finds that Policy ¶¶ 4(c)(i)
and (iii) are inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,
D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy.”); see
also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov.
13, 2000) finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question; see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to display an “under construction”
page did not constitute a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the
disputed domain names or is authorized to register domain names featuring
Complainant’s AIG and AMERICAN GENERAL marks.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain names pursuant to 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 Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name.
Moreover, the
fact that Respondent offered to sell the domain name registrations to
Complainant is evidence that Respondent lacks rights and legitimate interests
in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See
Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) stating that “Respondent’s lack of rights and legitimate interests in the
domain name is further evidenced by Respondent’s attempt to sell its domain
name registration to Complainant, the rightful holder of the RED CROSS mark”; see also Am. Int’l Group, Inc. v. Dobson,
FA 146568 (Nat. Arb. Forum Apr. 8, 2003) finding evidence that Respondent
lacked rights or legitimate interests in the disputed domain name after it sent
several correspondences offering to sell its rights in the domain name in
exchange for 1,500 shares of Complainant’s stock to Complainant.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The fact that
Respondent offered to sell the domain name registrations to Complainant is
evidence that Respondent registered and used the <aiglifeassignments.com>,
<aiglifesettlements.com> and <americangenerallifesettlements.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(i). See
Nabisco Brands Co. v. Patron Group,
D2000-0032 (WIPO Feb. 23, 2000) finding that Respondent registered and used the
domain names to profit where Respondent offered to sell the domain names for
$2,300 per name; see also Matmut v. Tweed, D2000-1183 (WIPO Nov.
27, 2000) finding bad faith under Policy paragraph 4(b)(i) where Respondent
stated in communication with Complainant, “if you are interested in buying this
domain name, we would be ready to sell it for $10,000”.
Furthermore,
Respondent registered the disputed domain names nearly six months ago, and the
domain names resolve to an “under construction” website. The Panel does not find it necessary to wait
for Respondent to actively use the domain names, which contain confusingly
similar versions of Complainant’s AIG and AMERICAN GENERAL marks, as any
probable use of the domain names would almost certainly be in violation of
Complaint’s rights. Thus, the Panel
finds that Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260
(WIPO Nov. 23, 2000) finding bad faith where Respondent made no use of the
domain name in question and there are no other indications that Respondent
could have registered and used the domain name in question for any
non-infringing purpose; see also Phat Fashions v. Kruger, FA 96193 (Nat.
Arb. Forum Dec. 29, 2000) finding bad faith under Policy ¶ 4(b)(iv) even though
Respondent has not used the domain name because “It makes no sense whatever to
wait until it actually ‘uses’ the name, when inevitably, when there is such
use, it will create the confusion described in the Policy”.
Moreover,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the marks due to Complainant’s
registrations of the marks with the USPTO and with trademark authorities
worldwide as well as to the immense fame that Complainant’s marks have
acquired. Therefore, the Panel finds
that Respondent registered and used the domain names in bad faith pursuant to
Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the worldwide prominence of the
mark and thus Respondent registered the domain name in bad faith.
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 <aiglifeassignments.com>, <aiglifesettlements.com>
and <americangenerallifesettlements.com> domain names be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 17, 2005
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