American International Group, Inc. v. AIG Web
Claim Number: FA0603000662260
Complainant is American International Group, Inc. (“Complainant”), 70 Pine Street, New York, NY, 10270. Respondent is AIG Web (“Respondent”), 15111 N. Hayden Rd., Ste 160, PMB 535, Scottsdale, AZ, 85260.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aigautos.com>, registered with Namesdirect.
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 March 17, 2006; the National Arbitration Forum received a hard copy of the Complaint March 17, 2006.
On March 17, 2006, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <aigautos.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect verified that Respondent is bound by the Namesdirect 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 March 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 2006, 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@aigautos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2006, 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.
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, <aigautos.com>, is confusingly similar to Complainant’s AIG mark.
2. Respondent has no rights to or legitimate interests in the <aigautos.com> domain name.
3. Respondent registered and used the <aigautos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Group, Inc., uses the AIG mark in relation to its wide variety of insurance and financial services. Complainant holds numerous registrations of the AIG mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,273,845 issued April 10, 1984; Reg. No. 1,851,675 issued August 30, 1994; Reg. No. 2,320,184 issued February 22, 2000). In addition, Complainant has used the AIG mark since 1968 in connection with its insurance and financial services, and since 1980, it has used the mark in connection with automobile insurance services. Complainant spends millions of dollars annually in promoting its services under the AIG mark, including advertising in widely circulating magazines, major sporting events and prime-time television shows. As a result, the AIG mark is well known worldwide.
Respondent registered the <aigautos.com> domain name September 24, 2005. Internet users who access this domain name are taken to a generic search-engine website featuring Complainant’s mark, links to websites offering Complainant’s services and links to Complainant’s competitors’ websites.
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. 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 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 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 using extrinsic evidence in this
proceeding that it has rights in the AIG mark through its registration with the
USPTO. See Vivendi Universal Games
v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); 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.”).
Respondent’s <aigautos.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire AIG mark and merely adds the descriptive term “autos” along with the top-level domain “.com.” The term “auto” is a descriptive term, and therefore adds no distinctive qualities to the disputed domain name. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The addition of a top-level domain also fails to distinguish the disputed domain name from the mark, because all domain names require top-level domains. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests. Respondent, however, has failed to respond to the Complaint. See 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”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Complainant has presented a prima facie case. Thus, the Panel will consider whether an evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
The Panel finds that Respondent is using a domain name that is confusingly similar to Complainant’s AIG mark in order to divert users who are interested in Complainant’s goods and services to Respondent’s website. Respondent’s website features Complainant’s marks and links to websites offering Complainant’s services, which serves to further this confusion. Respondent presumably receives payment in the form of click-through fees for diverting Internet traffic to the other websites linked to Respondent’s website. The Panel finds that Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
Respondent has not provided any
proof establishing that it is commonly known by the <aigautos.com>
domain name, and nothing in the WHOIS database entry for this domain name
indicates that Respondent is commonly known by the domain name. Moreover, based on the well-known status of
Complainant’s mark in the United States and the fact that both parties are
located in the United States it is unlikely that Respondent can be commonly
known by a similar mark. The Panel
finds that Respondent has no rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be
difficult for Respondent to demonstrate that it had rights or legitimate
interests in the domain name given Complainant's long and substantial use of
its unique and famous XEROX mark.”); see also 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").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent uses the <aigautos.com> domain name,
which is confusingly similar to Complainant’s AIG mark, to present Internet
users with links to services offered by Complainant and its competitors. The Panel assumes that Respondent receives
click-through fees in return for directing Internet traffic to other websites. Such use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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 Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used a domain name confusingly similar to the
complainant’s mark to attract users to a website sponsored by the respondent).
Furthermore, because the Panel
infers that Respondent benefits from diverting Internet users interested in
Complainant’s services to competitors’ websites, the Panel holds that
Respondent is using the domain name to disrupt Complainant’s business. Using the disputed domain name in
this fashion constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iii). See
Mission KwaSizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); see
also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding respondent registered the domain name in question
to disrupt the business of the complainant, a competitor).
The Panel finds that Complainant 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 <aigautos.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 2, 2006
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