American International Group, Inc. v. Sidney Parfait
Claim Number: FA0603000670059
Complainant is American International Group, Inc. (“Complainant”), represented by Caroline L. Stevens, Two Prudential Plaza, Suite 4900, Chicago, IL, 60601. Respondent is Sidney Parfait (“Respondent”), 206 Rooks Dr., Slidell, LA, 70458.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <americangeneralinsurance.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and 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 29, 2006; the National Arbitration Forum received a hard copy of the Complaint March 30, 2006.
On March 31, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <americangeneralinsurance.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, 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 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 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@americangeneralinsurance.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 26, 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, <americangeneralinsurance.com>, is confusingly similar to Complainant’s AMERICAN GENERAL mark.
2. Respondent does not have any rights or legitimate interests in the <americangeneralinsurance.com> domain name.
3. Respondent registered and used the <americangeneralinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Group, Inc., is among the largest international insurance and investment companies in the world with operations in more than 130 jurisdictions. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN GENERAL mark (Reg. No. 803,239 issued February 1, 1966) in connection with its various financial and insurance services.
Respondent registered the <americangeneralinsurance.com> domain name November 9, 2005. Respondent is using the disputed domain name to redirect Internet users to its commercial website that features Complainant’s mark and links to websites that promote Complainant’s services and other insurance services without Complainant’s authorization.
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 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 proof in this
proceeding that it has legal rights in the AMERICAN GENERAL mark through
registration of the mark with the USPTO.
See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., 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.”); see also 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.”).
The
disputed domain name that Respondent registered, <americangeneralinsurance.com>, is confusingly similar to
Complainant’s AMERICAN GENERAL mark because Respondent’s domain name incorporates Complainant’s
mark in its entirety and adds the term “insurance” and the generic top-level
domain “.com.” Moreover, the term
“insurance” describes Complainant. The
Panel finds that such minor additions to Complainant’s registered mark do not
sufficiently differentiate the confusingly similar aspects 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 the complainant’s HOYLE mark, and that
the addition of “casino,” a generic word describing the type of business in
which the complainant is engaged, does not take the disputed domain name out of
the realm of confusing similarity); see also Marriott Int’l, Inc. v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the
respondent’s domain name <marriott-hotel.com> is confusingly similar to
the complainant’s MARRIOTT mark); see also Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he 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 finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name. Complainant alleged that Respondent does not have rights to or legitimate interests in the <americangeneralinsurance.com> mark and domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have 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 the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the <americangeneralinsurance.com>
domain name to redirect Internet users to its commercial website that features
Complainant’s mark and links to websites that promote Complainant’s services
and other insurance services without Complainant’s authorization. Respondent’s use of a domain name that is
confusingly similar to Complainant’s AMERICAN GENERAL mark to redirect Internet
users interested in Complainant’s products and services to a website that
offers links to websites that promote Complainant’s products and services and
other insurance services without Complainant’s authorization is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum
June 12, 2002) (finding the respondent’s use of the disputed domain name to
solicit pharmaceutical orders without a license or authorization from the
complainant does not constitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001)
(finding that use of the complainant’s mark to sell the complainant’s perfume,
as well as other brands of perfume, is not bona fide use); see also Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the
complainant’s goods without the complainant’s authority, as well as others’
goods, is not bona fide use).
Moreover, Respondent offered no evidence and no evidence in the record suggests that Respondent is commonly known by the <americangeneralinsurance.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <americangeneralinsurance.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent was not commonly known by the disputed domain name and was not using the domain name in connection with a legitimate or fair use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith by registering and using a domain name containing Complainant’s mark in its entirety without Complainant’s authorization. The <americangeneralinsurance.com> domain name resolves to Respondent’s commercial website that features Complainant’s mark and links to websites that promote Complainant’s services and other insurance services without Complainant’s authorization. Additionally, Respondent’s use of Complainant’s entire AMERICAN GENERAL mark in the domain name creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain. The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); 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).
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 <americangeneralinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 9, 2006.
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