American International Group, Inc. v.
XMedia c/o Mohamad Haidar
Claim
Number: FA0508000536173
Complainant is American International Group, Inc. (“Complainant”),
represented by Caroline L. Stevens, Two Prudential Plaza, Suite 4900,
Chicago, IL 60601. Respondent is XMedia c/o Mohamad Haidar (“Respondent”),
BLC Bank Riad Elsolh Banks Street, Beirut, Lebanon N/A, LB.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <aigworld.com>, registered with Gkg.Net,
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 10, 2005.
On
August 9, 2005, Gkg.Net, Inc. confirmed by e-mail to the National Arbitration
Forum that the <aigworld.com> domain name is registered with Gkg.Net,
Inc. and that Respondent is the current registrant of the name. Gkg.Net, Inc. has verified that Respondent
is bound by the Gkg.Net, 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
August 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 1, 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@aigworld.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 7, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Tyrus R. Atkinson, JR., 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 <aigworld.com>
domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or
legitimate interests in the <aigworld.com> domain name.
3. Respondent registered and used the <aigworld.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, American International Group, Inc., provides
various insurance, financial and real estate services under its AIG mark. In addition, Complainant provides
information technology services in the insurance industry, including
information technology management and consulting services. Complainant is the world’s leading insurance
and financial services organization with operations in more than 130 countries
and jurisdictions.
Complainant holds numerous registrations with the United States Patent
and Trademark Office (“USPTO”) for the AIG mark (including Reg. No. 1,172,557
issued October 6, 1981; Reg. No. 1,273,845 issued April 10, 1984; and 2,320,184
issued February 22, 2000). Complainant
has used its AIG mark since at least as early as 1968 in association with its
insurance and financial services.
Complainant also holds registrations for a number of marks that include
the AIG mark.
Complainant has spent millions of dollars in advertising and promoting
its goods and services under the AIG mark and continues to spend substantial
amounts of money in this capacity.
Complainant has prominently advertised its mark during numerous popular
sporting and entertainment events, including the 2003 Academy Awards and 2004
Super Bowl.
Respondent registered the <aigworld.com> domain name on November 19, 2004. In e-mails between Complainant’s
representatives and a representative of Respondent, Respondent’s representative
indicated that it registered the domain name for use in association with its
company “American International Group,” which the representative claimed is
registered in Michigan. The
representative indicated that Respondent’s company is in the business of
information technology, specifically software engineering, in several countries
overseas.
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. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also 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.”).
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
asserts rights in the AIG mark based on its registration of the mark with the
USPTO. It is well established under the
Policy that a complainant’s registration of a mark with a federal authority
establishes a prima facie case of the complainant’s rights. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (“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.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The <aigworld.com>
domain name includes Complainant’s AIG mark in its entirety, adding only the
generic or descriptive word “world” and the generic top-level domain (gTLD)
“.com.” Prior panels have consistently
held that adding a generic or descriptive term and a gTLD to a complainant’s
mark will not prevent a domain name from being deemed confusingly similar to
the mark. See Nikon, Inc. v.
Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing
similarity under the Policy is decided upon the inclusion of a trademark in the
domain name rather than upon the likelihood of confusion test under U.S.
trademark law); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the subject domain name incorporates the
VIAGRA mark in its entirety, and deviates only by the addition of the word
“bomb,” the domain name is rendered confusingly similar to the complainant’s
mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) (finding that "the addition of the generic top-level domain
(gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants"). The Panel discerns no reason to distinguish
this case from established precedent and holds that the disputed domain name is
confusingly similar to Complainant’s AIG mark under Policy ¶ 4(a)(i).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now conduct an analysis of whether Respondent has met its
burden to establish rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c).
Complainant
asserts that Respondent is not commonly known by the AIG mark or the <aigworld.com>
domain name and that Complainant has not licensed or otherwise permitted
Respondent to use Complainant’s mark or any variation thereof. Since the Panel has not received a response
from Respondent, the Panel is left with no evidence to rebut Complainant’s
contentions. Therefore, the Panel finds
that Respondent has not established rights 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 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); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the respondents’ failure to respond can be construed as an admission that
they have no legitimate interest in the domain names).
According to the
record, Respondent is using or plans to use the <aigworld.com>
domain name to operate a website in association with a company in the business
of providing information technology services, which overlaps with Complainant’s
information technology services.
Respondent’s use or intended use of a domain name that includes
Complainant’s famous AIG mark to offer products and services that compete with
those of Complainant 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 under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW
Zban, FA 203164 (Nat. Arb. Forum Dec. 1,
2003) (finding that the respondent was not using the domain name within the
parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain
name to take advantage of the complainant's mark by diverting Internet users to
a competing commercial site); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where the
respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website). Additionally, in failing to submit a response to Complainant’s contentions, Respondent
has neglected to provide any evidence that would challenge Complainant’s prima
facie case. The Panel, therefore,
finds that Respondent has not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(i) or (iii). See Euromarket Designs, Inc. v. Domain For Sale
VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence,
the complainant and the panel must resort to reasonable inferences from
whatever evidence is in the record. In
addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such
inferences from respondent’s failure to respond ‘as it considers
appropriate.’”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
asserts that Respondent is using or will use the <aigworld.com> domain name in connection with a website
for a business that offers information technology services in competition with
those of Complainant. Respondent’s use
of Complainant’s well-known and distinctive AIG mark in the domain name creates
a likelihood of confusion and suggests an attempt on the part of Respondent to
attract Internet users to Respondent’s competing website for Respondent’s
commercial gain. The Panel finds that
there is sufficient evidence of bad faith registration and use under Policy ¶
4(b)(iv). See Phat Fashions, LLC v. Kruger, FA 96193
(Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even
though the 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”); see
also Identigene, Inc. v. Genetest
Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the
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 the complainant is the source of or is sponsoring the
services offered at the site); 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).
Furthermore,
Respondent’s registration of the <aigworld.com> domain name, which contains
Complainant’s famous AIG mark in its entirety, and Complainant’s registration
of its mark with the USPTO suggest that Respondent knew of Complainant’s rights
in the mark. Complainant has spent
millions of dollars to advertise and promote its mark and has acquired
substantial goodwill in its mark, causing the public to associate the AIG mark
with Complainant’s goods and services.
In light of these circumstances, the Panel finds that Respondent chose
the disputed domain name due to the fame of Complainant’s AIG mark. Respondent’s registration of a domain name
that contains Complainant’s mark despite Respondent’s knowledge of
Complainant’s rights in the mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
“[T]here is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively.”); see
also 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 the complainant’s EXXON
mark given the worldwide prominence of the mark and thus the respondent
registered the domain name in bad faith); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
The Panel finds
that Complainant has satisfied 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 <aigworld.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
September 21, 2005
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