American International Group, Inc. v. Dr. Marco Ferro
Claim Number: FA0608000786930
Complainant is American International Group, Inc. (“Complainant”), represented by Caroline L. Stevens, Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is Dr. Marco Ferro (“Respondent”), P.O. Box 749, Fribourg 1700 CH.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aigautoinsurance.com>, registered with Nametellers.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2006.
On September 11, 2006, Nametellers.com, Inc confirmed by e-mail to the National Arbitration Forum that the <aigautoinsurance.com> domain name is registered with Nametellers.com, Inc and that Respondent is the current registrant of the name. Nametellers.com, Inc has verified that Respondent is bound by the Nametellers.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 September 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 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@aigautoinsurance.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr.
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 <aigautoinsurance.com> domain name is confusingly similar to Complainant’s AIG mark.
2. Respondent does not have any rights or legitimate interests in the <aigautoinsurance.com> domain name.
3. Respondent registered and used the <aigautoinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American International Group, Inc., and its
member companies have engaged in offering international insurance and financial
services worldwide under the AIG mark since at least as early as 1968. In particular, Complainant has utilized the
AIG mark in connection with its offering of automobile insurance services since
at least as early as 1980. Complainant
also holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the AIG mark (i.e., Reg. No. 1,273,845 issued
April 10, 1984). Additionally,
Complainant holds domain name registrations for several domain names, including
<aig.com> and <aigauto.com>, through which Complainant operates
websites regarding its offering of insurance and financial services.
Respondent, Dr. Marco Ferro, registered the <aigautoinsurance.com> domain name on July 6, 2006. Respondent’s disputed domain name resolves to a website providing information about automobile insurance and featuring links to third-party websites that directly compete with Complainant’s insurance services business.
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 provided evidence of several trademark registrations for the AIG mark with the USPTO, as well as evidence of trademark registrations for the mark throughout the world. Consequently, the Panel finds that Complainant’s registration of the AIG mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
Furthermore, the Panel finds that Respondent’s <aigautoinsurance.com> domain name is confusingly similar to Complainant’s AIG mark for purposes of Policy ¶ 4(a)(i). Respondent’s disputed domain name consists of Complainant’s registered AIG mark, with the addition of the terms “auto” and “insurance,” and the generic top-level domain (“gTLD”) “.com.” Previous panels have consistently held that the addition of descriptive terms to a mark does not negate the confusing similarity created between the resulting domain name and the mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Moreover, prior decisions have found that the addition of a gTLD to a mark does not sufficiently distinguish the resulting domain name pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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 . . . .”). Therefore, the Panel finds that the additions made to Complainant’s mark in Respondent’s disputed domain name fails to avoid the creation of confusing similarity between the mark and the domain name pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests in connection with the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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.”). The Panel finds that Complainant has sufficiently established a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
The Panel finds that the evidence on record does not
sufficiently demonstrate that Respondent is commonly known by the <aigautoinsurance.com>
domain name for purposes of Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not a licensee of Complainant,
and Complainant did not authorize Respondent to use the AIG mark in connection
with the <aigautoinsurance.com> domain name. Moreover, the evidence on record, including
Respondent’s WHOIS information, suggests that Respondent is known as “Dr. Marco
Ferro.” Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Instron Corp.
v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the
respondent is not commonly known by the <shoredurometer.com> or
<shoredurometers.com> domain names where the WHOIS information indicates
the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip’t,” and no other evidence suggests that the respondent is
commonly known by the domain names); see also M. Shanken Commc’ns,
Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006)
(finding that the respondent is not commonly known by the
<cigaraficionada.com> domain name because the WHOIS information lists the
registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other
evidence exists in the record indicating that the respondent is known by the
domain name).
Furthermore, the evidence on record suggests that Respondent’s <aigautoinsurance.com> domain name resolves to a website featuring information about automobile insurance and providing links to third-party websites in direct competition with Complainant’s insurance services business. Consistent with the holdings of previous panels, the Panel in the instant case finds that such conduct by Respondent does not demonstrate either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s <aigautoinsurance.com> domain name resolves to a website featuring links to a variety of third-party websites offering insurance services in direct competition with Complainant’s business. Consequently, the Panel presumes that Respondent received revenue through click-through fees in the operation of its website located at the disputed domain name. Therefore, in light of Respondent’s utilization of a confusingly similar domain name to attract Internet users to its website for Respondent’s commercial gain, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Furthermore, as a result of Respondent’s use of the <aigautoinsurance.com> domain name to operate a website offering links to third-parties in competition with Complainant, the Panel finds that Respondent registered and used the disputed domain name with the intent to disrupt Complainant’s business. Therefore, the Panel concludes that such conduct by Respondent demonstrates registration and use of the <aigautoinsurance.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
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 <aigautoinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 23, 2006
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