American International Group, Inc. v.
Parker Stanberry
Claim Number: FA0503000436758
Complainant American International Group, Inc. (“Complainant”),
is represented by Mark A. Nieds, Two
Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is Parker
Stanberry (“Respondent”), 105 Duane St., New York, NY 10007.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aigbonline.com>,
registered with Alldomains.com 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.
Judge
Harold Kalina (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 9, 2005.
On
March 14, 2005, Alldomains.com Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aigbonline.com>
is registered with Alldomains.com Inc. and that Respondent is the current
registrant of the name. Alldomains.com Inc. has verified that Respondent is
bound by the Alldomains.com 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
March 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 4, 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@aigbonline.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 13, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (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 <aigbonline.com> domain name is confusingly similar to
Complainant’s AIG mark.
2. Respondent does not have any rights or
legitimate interests in the <aigbonline.com>
domain name.
3. Respondent registered and used the <aigbonline.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American International Group, Inc., has used the AIG mark continuously since as
early a 1968 to distinguish its member companies’ wide variety of insurance and
financial services from those offered by others. Complainant and its member companies offer a wide variety of
financial and investment services, including bank services, investment banking
services, mergers and acquisitions services, mutual fund services,
investment-fund management, securities broker/dealer services, interest rate
and currency swaps and commodities trading.
Complainant has
marketed its services in conjunction with its AIG mark on print advertisements,
product brochures, radio advertisements, television commercials and its
websites at <aig.com>, <aigonline.com> and
<aigprivatebank.com>.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the AIG mark (e.g., Reg. No. 1,151,229, issued April 14,
1981). Complainant also owns trademark
registrations incorporating the AIG mark in over 100 countries around the
world, including the European Union and Switzerland (e.g., Reg. No. 480,032,
issued April 1, 2001 in Switzerland).
Respondent
registered the <aigbonline.com>
domain name on January 24, 2005.
Respondent is using the disputed domain name to redirect Internet users
to a website that markets an “AIG Private Bank” that was formed in England and
is located in Switzerland. AIG Private
Bank offers banking and financial services and is not an affiliate of
Complainant.
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 that it has rights in the AIG mark through registration with the
United States Patent and Trademark Office and through continued use of the mark
in commerce for 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 <aigbonline.com> domain name
registered by Respondent is confusingly similar to Complainant’s AIG mark
because the domain name incorporates Complainant’s mark and only deviates with
the addition of the letter “b” and the descriptor “online.” The addition of a non-distinctive, descriptive
or generic term does not change the overall impression of the mark. The addition of the letter ‘b” as an elusion
to the word “bank” and the descriptive word “online” describing Complainant’s
business does not negate the confusing similarity of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
is confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity); 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).
Furthermore, the
addition of the generic top-level domain “.com” is irrelevant in determining
whether the <aigbonline.com>
domain name is confusingly similar to Complainant’s AIG mark. See
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 Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <aigbonline.com> domain
name. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s
failure to respond to the Complaint, it is assumed that Respondent lacks rights
and legitimate interests in the disputed domain name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on 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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such rights or legitimate interests do exist); see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interests in the domain names).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. 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 also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of the Complaint to be deemed true); 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).
Respondent is
using the disputed domain name to redirect Internet users to a website that
markets an “AIG Private Bank” that was formed in England and is located in
Switzerland that offers banking and financial services similar to those offered
by Complainant. Respondent’s use of a
domain name that is confusingly similar to Complainant’s AIG mark to redirect
Internet users interested in Complainant’s services to Respondent’s commercial
website that offers similar banking and financial services is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation of a web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”); see also Avery Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights
or legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant); see also Am.
Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept.
6, 2000) (finding that Respondent’s operation of website offering essentially
the same services as Complainant and displaying Complainant’s mark was
insufficient for a finding of bona fide offering of goods or services); see also N. Coast Med., Inc. v. Allegro Med.,
FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate
interests in a domain name that diverted Internet users to Respondent’s
competing website through the use of Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is incorporating
Complainant’s mark in its domain name to lead Internet users to a website that
offers competing banking and financial services. The Panel finds that Respondent is intentionally creating a
likelihood of confusion with Complainant’s mark to attract Internet users to
Respondent’s website for Respondent’s commercial gain, pursuant to Policy ¶
4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30,
2000) (finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650
(Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad
faith use and registration by linking the domain name to a website that offers
services similar to Complainant’s services, intentionally attempting to
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s marks).
Moreover,
Respondent registered the confusingly similar domain name to disrupt
Complainant’s business by redirecting Internet traffic intended for Complainant
to a website offering competing financial and banking-related services. Registration of a domain name confusingly
similar to a competitor’s mark for the purpose of disrupting the business of a
competitor is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA
94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant's marks
suggests that Respondent, Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant's business); see also SR Motorsports v. Rotary
Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary purpose
of disrupting the competitor's business when the parties are part of the same,
highly specialized field); see also
Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum
Dec. 23, 2000) (concluding that domain names were registered and used in bad
faith where Respondent and Complainant were in the same line of business in the
same market area).
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 <aigbonline.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
April 26, 2005
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