American International Group, Inc. v.
Salvador Soler Serrano
Claim
Number: FA0502000422226
Complainant is American International Group, Inc. (“Complainant”),
represented by Caroline L. Stevens of Leydig, Voit & Mayer, Ltd., Two Prudential Plaza, Ste. 4900, Chicago, IL 60601. Respondent is Salvador Soler Serrano (“Respondent”), C. Diputacio, 184 ent. 1,
Barcelona 08011, Spain.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <a-i-g.net>, registered with Arsys
Internet, S.L. d/b/a Nicline.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically February
15, 2005; the National Arbitration Forum received a hard copy of the Complaint February
16, 2005. The Complaint was submitted
in both Spanish and English.
On
February 17, 2005, Arsys Internet, S.L. d/b/a Nicline.com confirmed by e-mail
to the National Arbitration Forum that the domain name <a-i-g.net>
is registered with Arsys Internet, S.L. d/b/a Nicline.com and that Respondent
is the current registrant of the name. Arsys Internet, S.L. d/b/a Nicline.com
verified that Respondent is bound by the Arsys Internet, S.L. d/b/a Nicline.com
registration agreement and thereby has 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 24, 2005, a Spanish language Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of March 16, 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@a-i-g.net 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 21, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Spanish language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <a-i-g.net>, is confusingly similar to Complainant’s
AIG mark.
2. Respondent has no rights to or legitimate
interests in the <a-i-g.net> domain name.
3. Respondent registered and used the <a-i-g.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American International Group, Inc., is a leading insurance and financial
services organization with operations in more than 130 countries and
jurisdictions. As such, Complainant’s
AIG mark has earned valuable goodwill and is known worldwide. Complainant’s 2003 revenues were more than
$81 billion. Annually, Complainant
spends millions of dollars in advertising and promoting its goods and services
under the AIG mark.
Since at least
as early as 1968, Complainant has used the AIG mark in connection with its
various finance, investment, real estate, business consultation and insurance
services. Complainant holds numerous registrations for the AIG mark with the
United States Patent and Trademark Office (Reg. No. 1,273,845 issued April 10,
1984; Reg. No. 1,851,675 issued August 30, 1994; and Reg. No. 2,320,184 issued
February 22, 2000). Complainant also
holds a registration for the AIG mark in Spain (Reg. No. 887,189 issued March
17, 1989), which is Respondent’s purported residence. In addition, Complainant holds approximately 600 AIG trademark
registrations in countries that range from Afghanistan to Singapore.
Complainant
operates websites at <aig.com>, <aigdirect.com> and
<aigt.com>, among others.
Respondent
registered the <a-i-g.net> domain name September 10, 2004. Respondent has parked the domain name. The parked page has an active link to the
homepage of the registrar and active links to information technology services,
such as web hosting.
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
will draw such inferences
as the Panel
considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 to 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
established with extrinsic proof in this proceeding that it has rights to the
AIG mark as evidenced by the trademark registrations with the United States
Patent and Trademark Office and in Spain, and through continued use of the AIG
mark in commerce over the last thirty-seven years. See 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.”); 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.).
The disputed
domain name, <a-i-g.net>, is confusingly similar to Complainant’s
AIG mark because the domain name incorporates Complainant’s mark and simply
adds the generic top-level domain (“gTLD”) “.net” and a hyphen between each
letter. The addition of hyphens and the
gTLD fail to sufficiently differentiate the disputed domain name from
Complainant’s mark. See Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Nintendo of
Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000)
(finding <game-boy.com> identical and confusingly similar Complainant’s
GAME BOY mark, even though the domain name is a combination of two descriptive
words divided by a hyphen); see also Easyjet Airline Co. Ltd. v. Harding,
D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name
<easy-jet.net> was virtually identical to Complainant's EASYJET
mark and therefore that they are confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and legitimate interests in the disputed
domain name and alleged that Respondent has no such rights. Respondent failed to contest Complainant’s
assertions that Respondent lacks rights and legitimate interests in the
disputed domain name. Because
Complainant’s evidence and arguments are unopposed, the Panel is permitted to accept
all reasonable inferences made in the Complaint as true. See
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.”); see 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);
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).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent and Respondent’s failure to fulfill its
burden means that Respondent has failed to invoke any circumstances that could
demonstrate rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once complainant asserts that
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also 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 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).
Respondent is
not authorized or licensed by Complainant to use the AIG mark in the domain
name. Moreover, no evidence before the
Panel suggests that Respondent is commonly known by the domain name pursuant to
Policy ¶ 4(c)(ii). Therefore,
Respondent has no rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See 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"); 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); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) respondent
is not a licensee of complainant; (2) complainant’s rights in the mark precede
respondent’s registration; (3) respondent is not commonly known by the domain
name in question).
Furthermore, the
<a-i-g.net> domain name is confusingly similar to Complainant’s
AIG mark and is used to direct Internet users to a parked page, which offers
links to the registrar and active links to information technology services,
such as web hosting. The Panel finds
that this use of a domain name that is confusingly similar to Complainant’s
mark is not 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 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 Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(finding that “merely registering the domain name is not sufficient to
establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of
the Policy”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered the <a-i-g.net> domain name that is
confusingly similar to Complainant’s AIG mark.
Since the disputed domain name was registered, Respondent has failed to
market any bona fide goods or services, other than the registrar’s website
services. Respondent’s passive holding
of a domain name confusingly similar to Complainant’s mark evidences bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible,
in certain circumstances, for inactivity by the Respondent to amount to the
domain name being used in bad faith”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith).
Additionally,
Respondent’s registration of the disputed domain name, a domain name that
incorporates Complainant’s mark and simply adds hyphens, suggests that
Respondent knew of Complainant’s rights in the AIG mark. Furthermore, Complainant’s registration of
its mark with the United States Patent and Trademark Office confers
constructive knowledge on anyone attempting to use the mark. Thus, the Panel finds that Respondent chose
the <a-i-g.net> domain name based on the distinctive qualities of
Complainant’s mark, which evidences bad faith registration and use pursuant to
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 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); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see also 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.”).
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 <a-i-g.net> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 4, 2005.
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