American International Group, Inc. v. A I J Trading
Claim Number: FA0705000980710
Complainant is American International Group, Inc. (“Complainant”), represented by Jeffrey
S. David, of Leydig, Voit & Mayer, Ltd.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aigtraders.com>, registered with Register.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 10, 2007.
On May 10, 2007, Register.com, Inc., confirmed by e-mail to the National Arbitration Forum that the <aigtraders.com> domain name is registered with Register.com, Inc., and that Respondent is the current registrant of the name. Register.com, Inc., has verified that Respondent is bound by the Register.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 May 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 4, 2007 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@aigtraders.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant provides
financial and insurance services, including foreign exchange trading,
commodities trading, brokerage, and other financial products.
Collectively, Complainant and
its subsidiaries generated over $108 billion in revenue for the year 2005.
Each year, Complainant and
its member companies spend millions of dollars advertisitng and promoting their
financial goods and services.
Complainant’s AIG mark has
been prominently featured in connection with sporting events, prime time
television programs, and widely-circulated magazines.
Complainant has registered
numerous trademarks as a financial service provider, including the AIG mark
registered with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 1,151,229, issued April 14, 1981).
Since 1999, Complainant has
also maintained the <aigtrading.com> domain name in conjunction with its
product offerings.
Respondent is not authorized to
use Complainant’s AIG mark, and Respondent is in no way connected with
Complainant.
Respondent registered the <aigtraders.com> domain name on September 8, 2006.
Respondent’s domain name resolves to a website displaying Complainant’s AIG mark in combination with the generic term “traders” to advertise and promote Respondent’s commercial offerings, including Respondent’s “extensive world wide trading network,” import and export services, commodities services, and brokerage services.
Respondent’s <aigtraders.com> domain name is confusingly similar to Complainant’s AIG mark.
Respondent does not have any rights or legitimate interests in the <aigtraders.com> domain name.
Respondent registered and uses the <aigtraders.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has provided evidence demonstrating its rights in the AIG mark through its registration with the USPTO. Panels have repeatedly concluded that registration with a trademark authority is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007): “Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).” 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.”
Complainant asserts that Respondent’s <aigtraders.com> domain name is confusingly similar to Complainant’s AIG mark. In comparing the disputed domain name with Complainant’s mark, we conclude that neither the inclusion of the generic word “traders” nor the addition of the generic top-level domain “.com” is sufficient to set the domain name apart from Respondent’s use of Complainant’s mark in its entirety. Such use by Respondent leads to the conclusion that the domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.
See also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name was confusingly similar to a complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant was engaged, did not take the disputed domain name out of the realm of confusing similarity); see also 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 purposes of determining whether it is identical or confusingly similar).
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Before the burden shifts to Respondent to demonstrate rights or legitimate interests in the disputed domain name, Complainant must first make out a prima facie case showing Respondent’s lack thereof. See F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007): “Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.” See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.
Having concluded
that Complainant has satisfied the requisite showing, we now consider whether
Respondent has proffered any evidence demonstrating rights or legitimate
interests in the <aigtraders.com>
domain name.
In light of
Respondent’s failure to respond to Complainant’s allegations, we may infer that
Respondent holds no rights or legitimate interests in the <aigtraders.com> domain name. See Eroski, So. Coop. v. Getdomains
Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003): “It can be inferred
that by defaulting Respondent showed nothing else but an absolute lack of
interest on the domain name.” See also
Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
However, the Panel will nonetheless
search the record for evidence that Respondent possesses rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
In this connection, we first
observe that Respondent is not commonly known by the <aigtraders.com> domain name under Policy ¶ 4(c)(ii), inasmuch as
Respondent has failed to offer any evidence to refute Complainant’s assertion
that Respondent is not authorized to use Complainant’s AIG mark and that
Respondent is in no way connected with Complainant. Further, Respondent’s WHOIS information
provides no indication that Respondent is commonly known by the <aigtraders.com> domain name. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) a respondent is not a licensee of a complainant; (2) that
complainant’s prior rights in the domain name precede that respondent’s
registration; (3) that respondent is not commonly known by the domain name in
question); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that,
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected). Accordingly, we conclude that Respondent is
not commonly known by the <aigtraders.com>
domain name within the meaning of Policy ¶ 4(c)(ii).
We also note that complainant
alleges, and Respondent does not deny, that Respondent’s <aigtraders.com> domain name resolves
to a website displaying Complainant’s AIG mark alongside financial product
offerings nearly identical to those of Complainant, including commodities
trading and brokerage services. Considering
the likelihood of confusion between Complainant’s AIG mark and the disputed
domain name, we infer that Respondent is attempting to benefit commercially
from Internet users who mistake Respondent’s <aigtraders.com> domain name as a bona fide source of Complainant’s financial services. Such use by Respondent does not comport with
Policy ¶ 4(c)(i) as a bona fide
offering of goods or services or with Policy ¶ 4(c)(iii) as a legitimate
noncommercial or fair use. See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
See also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that a respondent lacked rights and legitimate interests in a domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”).
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Under this head, we are unable to
escape the inference from Complainant’s undisputed allegations that
Respondent’s use of the <aigtraders.com>
domain name to link Internet users to Respondent’s competing financial products
is an attempt by Respondent to benefit commercially from the likelihood of
confusion between the disputed domain name and Complainant’s AIG mark,
capitalizing on those Internet users who are misled into believing that Respondent’s
domain name is somehow associated with Complainant. This behavior evidences bad faith
registration and use under to Policy ¶ 4(c)(iv). See Amazon.com, Inc. v. Shafir,
FA 196119 (Nat. Arb. Forum Nov. 10, 2003):
As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
See also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith as provided in Policy ¶ 4(b)(iv) because that respondent used a domain name confusingly similar to a competing mark to attract Internet users to its commercial website).
In addition, it appears that Respondent registered the <aigtraders.com>
domain
name with at least constructive knowledge of Complainant’s rights in the AIG
trademark by virtue of Complainant’s prior registration of that mark with the
United States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <aigtraders.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 12, 2007
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