A-i-g.net

The timeline behind a-i-g.net

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION American International Group, Inc. v. Salvador Soler Serrano Claim Number: FA0502000422226 PARTIES Complainant is American International Group, Inc. (“Complainant”), represented by Caroline L. Stevens of Leydig, Voit & Mayer, Ltd., Two Prudential Plaza, Ste. 4900, Chicago, IL 60601. Respondent is Salvador Soler Serrano (“Respondent”), C. Diputacio, 184 ent. 1, Barcelona 08011, Spain. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <a-i-g.net>, registered with Arsys Internet, S.L. d/b/a Nicline.com. PANEL 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. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically February 15, 2005; the National Arbitration Forum received a hard copy of the Complaint February 16, 2005. The Complaint was submitted in both Spanish and English. On February 17, 2005, Arsys Internet, S.L. d/b/a Nicline.com confirmed by e-mail to the National Arbitration Forum that the domain name <a-i-g.net> is registered with Arsys Internet, S.L. d/b/a Nicline.com and that Respondent is the current registrant of the name. Arsys Internet, S.L. d/b/a Nicline.com verified that Respondent is bound by the Arsys Internet, S.L. d/b/a Nicline.com 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 February 24, 2005, a Spanish language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 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@a-i-g.net by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 21, 2005, 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. Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. The domain name that Respondent registered, <a-i-g.net>, is confusingly similar to Complainant’s AIG mark. 2. Respondent has no rights to or legitimate interests in the <a-i-g.net> domain name. 3. Respondent registered and used the <a-i-g.net> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, American International Group, Inc., is a leading insurance and financial services organization with operations in more than 130 countries and jurisdictions. As such, Complainant’s AIG mark has earned valuable goodwill and is known worldwide. Complainant’s 2003 revenues were more than $81 billion. Annually, Complainant spends millions of dollars in advertising and promoting its goods and services under the AIG mark. Since at least as early as 1968, Complainant has used the AIG mark in connection with its various finance, investment, real estate, business consultation and insurance services. Complainant holds numerous registrations for the AIG mark with the United States Patent and Trademark Office (Reg. No. 1,273,845 issued April 10, 1984; Reg. No. 1,851,675 issued August 30, 1994; and Reg. No. 2,320,184 issued February 22, 2000). Complainant also holds a registration for the AIG mark in Spain (Reg. No. 887,189 issued March 17, 1989), which is Respondent’s purported residence. In addition, Complainant holds approximately 600 AIG trademark registrations in countries that range from Afghanistan to Singapore. Complainant operates websites at <aig.com>, <aigdirect.com> and <aigt.com>, among others. Respondent registered the <a-i-g.net> domain name September 10, 2004. Respondent has parked the domain name. The parked page has an active link to the homepage of the registrar and active links to information technology services, such as web hosting. DISCUSSION 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. 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 to or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant established with extrinsic proof in this proceeding that it has rights to the AIG mark as evidenced by the trademark registrations with the United States Patent and Trademark Office and in Spain, and through continued use of the AIG mark in commerce over the last thirty-seven years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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. Respondent has the burden of refuting this assumption.). The disputed domain name, <a-i-g.net>, is confusingly similar to Complainant’s AIG mark because the domain name incorporates Complainant’s mark and simply adds the generic top-level domain (“gTLD”) “.net” and a hyphen between each letter. The addition of hyphens and the gTLD fail to sufficiently differentiate the disputed domain name from Complainant’s mark. See Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights to or Legitimate Interests Complainant established that it has rights to and legitimate interests in the disputed domain name and alleged that Respondent has no such rights. Respondent failed to contest Complainant’s assertions that Respondent lacks rights and legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the Panel is permitted to accept all reasonable inferences made in the Complaint as true. See 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.”); see Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that, in the absence of a response, the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that complainant’s allegations are true unless clearly contradicted by the evidence). Additionally, Complainant has submitted a prima facie case to the Panel, thereby shifting the burden to Respondent and Respondent’s failure to fulfill its burden means that Respondent has failed to invoke any circumstances that could demonstrate rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once complainant asserts that respondent has no rights or legitimate interests with respect to the domain, the burden shifts to respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that respondent has no rights or legitimate interests in the domain name because respondent never submitted a response or provided the Panel with evidence to suggest otherwise). Respondent is not authorized or licensed by Complainant to use the AIG mark in the domain name. Moreover, no evidence before the Panel suggests that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See 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"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant’s rights in the mark precede respondent’s registration; (3) respondent is not commonly known by the domain name in question). Furthermore, the <a-i-g.net> domain name is confusingly similar to Complainant’s AIG mark and is used to direct Internet users to a parked page, which offers links to the registrar and active links to information technology services, such as web hosting. The Panel finds that this use of a domain name that is confusingly similar to Complainant’s mark is not 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 Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where respondent failed to submit a response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent intentionally registered the <a-i-g.net> domain name that is confusingly similar to Complainant’s AIG mark. Since the disputed domain name was registered, Respondent has failed to market any bona fide goods or services, other than the registrar’s website services. Respondent’s passive holding of a domain name confusingly similar to Complainant’s mark evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith). Additionally, Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s mark and simply adds hyphens, suggests that Respondent knew of Complainant’s rights in the AIG mark. Furthermore, Complainant’s registration of its mark with the United States Patent and Trademark Office confers constructive knowledge on anyone attempting to use the mark. Thus, the Panel finds that Respondent chose the <a-i-g.net> domain name based on the distinctive qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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 Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <a-i-g.net> domain name be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: April 4, 2005. Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.