American International Group, Inc. v.
Henry Tsung
Claim
Number: FA0503000436752
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. Respondent is Henry Tsung (“Respondent”), No. 2, Alley 4, Lane 177, Swei Road,
Taipei, 356021 Taiwan.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <acessaig.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 8, 2005.
On
March 9, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <acessaig.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
March 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 29, 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@acessaig.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
April 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <acessaig.com>
domain name is confusingly similar/identical to Complainant’s AIG and ACCESSAIG
marks.
2. Respondent does not have any rights or
legitimate interests in the <acessaig.com> domain name.
3. Respondent registered and used the <acessaig.com>
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 over $81 billion. Annually, Complainant spends millions of
dollars in advertising and promoting its goods and services under the AIG and
ACCESSAIG marks.
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. In addition, Complainant has
used the ACCESSAIG mark in commerce since at least as early as 1997. Complainant holds numerous registrations
with the United States Patent and Trademark Office for the AIG mark (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) and holds a U.S. registration for
the ACCESSAIG mark (Reg. No. 2,258,904 issued July 6, 1999).
Complainant also
holds registrations for the AIG mark in Taiwan (Reg. No. 124,588 issued June 1,
2000; Reg. No. 38,362 issued September 16, 1989; and Reg. No. 46,971 issued
September 15, 1989), which is Respondent’s purported residence. In addition, Complainant holds approximately
600 AIG trademark registrations in countries that range from Afghanistan to
Zimbabwe.
Respondent
registered the <acessaig.com> domain name on October 22,
2003. Respondent is using the disputed
domain name to direct Internet users to a website that offers a search engine
and links to insurance, banking, and real estate foreclosure services.
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
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 Taiwan, and through continued use of the AIG
and ACCESSAIG marks in commerce over the last thirty-seven and eight years,
respectively. 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.).
Respondent’s <acessaig.com>
domain name is confusingly similar to Complainant’s AIG mark because the domain
name fully incorporates Complainant’s mark and simply adds the misspelled
version of the generic word “access” and the generic top-level domain (“gTLD”)
“.com.” The mere addition of a generic
word and a gTLD do not sufficiently differentiate Respondent’s domain name from
Complainant’s mark. 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 the
complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also AXA China Region Ltd. v. KANNET
Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic
qualifiers or generic nouns can rarely be relied upon to differentiate the mark
if the other elements of the domain name comprise a mark or marks in which
another party has rights).
In addition,
Respondent’s <acessaig.com>
domain name is confusingly similar to Complainant’s ACCESSAIG mark, as the
domain name wholly incorporates Complainant’s mark and simply deletes the
letter “c” and merely adds the gTLD “.com.”
The deletion of one letter and the addition of a gTLD to Complainant’s
mark is without legal implication. See
Hewlett-Packard Co. v. Cupcake City,
FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the
Policy); see also Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also State
Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum
June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to Complainant’s STATE FARM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to contest Complainant’s assertion 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 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); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the
respondent’s failure to respond: (1) the respondent does not deny the facts
asserted by the complainant, and (2) the respondent does not deny conclusions
which the complainant asserts can be drawn from the facts).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
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 the complainant asserts that the respondent has no rights
or legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (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”); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a
response, the respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Respondent is
not authorized or licensed by Complainant to use the AIG and ACCESSAIG marks in
the domain name. No evidence before the
Panel suggests Respondent is commonly known by the domain name pursuant to
Policy ¶ 4(c)(ii). There is a
presumption that Respondent is not commonly known by the domain name, which is
confusingly similar to Complainant’s registered marks, and no evidence has
rebutted that presumption in the current dispute. 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 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 the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Respondent uses
the <acessaig.com> domain name to redirect Internet users to a
website that features a search engine and links to third party businesses that
compete directly with Complainant. Respondent’s use of a domain name that is
confusingly similar to Complainant’s AIG and ACCESSAIG marks dilute
Complainant’s marks by diverting Internet users to websites unrelated to those
marks and therefore is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396
(Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which
is blank but for links to other websites, is not a legitimate use of the domain
names); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's
sole purpose in selecting the domain names was to cause confusion with the
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); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to competitors of the complainant, was not a bona fide offering of
goods or services).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses
the <acessaig.com> domain name to advertise a search engine and
links to financial-related websites.
Complainant’s business provides banking and financial services to
individuals and businesses throughout the world. The Panel finds that, by creating confusion around Complainant’s
AIG and ACCESSAIG marks, Respondent is attempting to disrupt the business of a
competitor. Respondent’s use a of
domain name confusingly similar to Complainant’s marks to sell services similar
to Complainant’s goods and services is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding
that the respondent registered and used the domain name <eebay.com> in
bad faith where the respondent has used the domain name to promote competing
auction sites); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from the complainant's marks
suggests that the respondent, the complainant’s competitor, registered and used
the domain name in bad faith).
Additionally,
Respondent’s registration of the disputed domain name, a domain name that
incorporates Complainant’s mark and simply adds a generic word and deletes the
letter “c”, suggests that Respondent knew of Complainant’s rights in the AIG
and ACCESSAIG marks. Furthermore,
Complainant’s registration of its marks 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 <acessaig.com> domain name based on the
distinctive qualities of Complainant’s marks, 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 the respondent had actual and constructive knowledge of
Complainant’s EXXON mark given the worldwide prominence of the mark and thus
the 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.”).
Respondent
intentionally registered a domain name that contains in its entirety
Complainant’s well-known marks and did so for Respondent’s commercial
gain. Respondent’s disputed domain name
diverts Internet users who seek Complainant’s products online to Respondent’s
commercial website through the use of a domain name that is confusingly similar
to Complainant’s marks. The Panel
infers that Respondent is receiving click through fees from the third party
links on its website. Therefore,
Respondent is unfairly and opportunistically benefiting from the goodwill and
reputation associated with Complainant’s marks. Respondent’s practice of diversion, motivated by commercial gain,
through the use of a confusingly similar domain name constitutes 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 G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if the respondent
profits from its diversionary use of the complainant's mark when the domain
name resolves to commercial websites and the respondent fails to contest the
Complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <acessaig.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
April 20, 2005
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