DECISION

American Life Insurance Company v. Cindy Nicholas d/b/a ABC Corp

Claim Number: FA0304000155466

PARTIES

Complainant is American Life Insurance Company, Wilmington, DE, USA (“Complainant”) represented by Claudia Werner Stangle of Leydig, Voit & Mayer, Ltd. Respondent is Cindy Nicholas d/b/a ABC Corp, Penang, MALAYSIA (“Respondent”) represented by Naveed Hasan Pirada of Essential Links.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <alicopakistan.com> registered with Onlinenic, Inc.

PANEL

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.

Anne M. Wallace, Q.C. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 23, 2003; the Forum received a hard copy of the Complaint on April 24, 2003.

On April 25, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <alicopakistan.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 April 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 20, 2003 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@alicopakistan.com by e-mail.

A timely Response was received and determined to be complete on May 9, 2003.

Complainant submitted a timely additional submission on May 14, 2003.

On May 17, 2003, Respondent submitted a timely additional submission.

On May 28, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant owns Trademark Registrations for numerous ALICO marks, including at least four United States registrations and two registrations in Pakistan, together with hundreds of registrations worldwide. Complainant, American Life Insurance Company, uses ALICO as an acronym for its company name and refers to itself and its services in advertising and promotional material as ALICO. Therefore, Complainant also bases its claim on the substantial goodwill developed in connection with the ALICO mark and the Complainant’s common law rights in the mark. Complainant does business in many jurisdictions worldwide and often uses the ALICO mark in connection with the particular country or region in which it does business. Many of complaint’s subsidiaries incorporate the company name and the specified country as part of their business name. For example, one of the Complainant’s member companies is American Life Insurance Company (Pakistan) Ltd. Many of the Complainant’s branches, subsidiaries and affiliates incorporate ALICO with the specified country as part of their contact e-mail address such as alico-paskistan@alico-measa.com (in Pakistan), alico-lebanon@alico-measa.com (in Lebanon), alico-jordan@alico-measa.com (in Jordan), alico-turkey@alico-measa.com (in Turkey), and so forth. Complainant also uses ALICO in connection with its main website at <alico.com>, as well as with several of its websites worldwide, in particular <alico-measa.com> (for the middle east, Africa and Asia, which includes Pakistan).

Since at least as early 1952, Complainant has used the mark ALICO to distinguish its wide variety of insurance and financial services from those offered by others. Complainant has invested extensively in creating, maintaining and promoting goodwill associated with the ALICO mark. Complainant has spent considerable time and money advertising and promoting the products and services offered in connection with the ALICO mark around the world by extensively using the mark ALICO on advertising and promotional material including but not limited to, print advertisements, product brochures, radio advertisements, television commercials and its general website at <alico.com>

To protect the extensive goodwill symbolized by the complaint’s ALICO marks, Complainant has sought and obtained the trademark registrations referred to above.

On March 28, 2001 Respondent reserved the disputed domain name, <alicopaskistan.com> without any authorization from Complainant. Complainant attests that Respondent is allegedly passing itself off as Complainant in Pakistan. Complainant also relies on the following events which Complainant invites the panel to conclude have emanated from Respondent:

1. In July 2002, an e-mail allegedly from ALICO’s “Marketing Team”, with a letterhead designation portraying AlicoPakistan.com as a “member company of AIG” (ALICO’s parent company), was sent out to many financial sector professionals in Pakistan. The letter asked each recipient to send their particulars to the e-mail address alico@alicopakistan.com. Then, in September of 2002, an e-mail message was sent to a number of AIG’s offices making reference to “Pet Insurance Services” being offered to consumers. ALICO does not provide Pet Insurance Services.

2. On January 20, 2003, an advertisement was published in the classified section of an English language daily newspaper in Karachi, Pakistan, stating that “we are no longer in business” and encouraging clients to contact the company via e-mail at 111-111-711@alicopakistan.com or to visit the website <alicopakistan.com>. Complainant asserts that the <alicopakistan.com> website was not active at that time, leading consumers who had valid ALICO Policies and who saw the advertisement to believe that ALICO was no longer in business and the policies were void.

3. On February 6, 2003, Complainant received an e-mail from a consumer (Naila Ihfan) stating that, “while surfing on the Internet, I came across your website, i.e.: <alicopakistan.com> and found something very unethical.” Certain pictures were attached to this e-mail of the president of the United States of America, Mr. George W. Bush, as well as picture portraying false images of the President of Pakistan, General Pervez Musharraf, along side noted terrorist Osama bin Laden, among other pictures. Currently, the <alicopakistan.com> website is not active.

Complainant asserts that Respondent’s domain name <alicopakistan.com> is identical in sight sound and commercial impression to complaint’s registered mark, thereby making confusion likely. In addition, substantial confusion is likely to have occurred due to the communication in advertisement of services allegedly provided by <alicopakistan.com>, a member of AIG.

The disputed domain name is identical to the trademark and service mark of the Complainant and is confusingly similar in that the domain name contains the ALICO mark in its entirety and merely adds a geographic term, Pakistan. The domain name at issue is likely to cause confusion given the obvious connection between it and ALICO and ALICO’s member company in Pakistan, namely American Life Insurance Company (Pakistan) Ltd. Confusion is also likely to be caused based on the similarity to ALICO’s general website located at <alico.com>, as well as the other domain names that ALICO owns each of which incorporate the ALICO mark. It is therefore likely that consumers will enter the domain name when looking for the website of Complainant and/or when looking for Complainant’s services in Pakistan. A side-by-side comparison of Complainant’s ALICO mark and the domain name at issue shows that they are identical except for the addition of the non-descriptive geographic word Pakistan. Registration and use of the domain name by Respondent has resulted and will continue to result in consumer confusion as to the source and to tarnishment of Complainant’s mark.

Respondent should not be considered as having rights or legitimate interests in the disputed domain name for several reasons. Respondent is not a licensee of Complainant, Respondent has not received permission or consent to use the trademark, and Complainant has prior rights in the trademark that precede Respondent’s registration of the domain name. Complainant’s use of ALICO since as early as 1952 predates Respondent’s two years of use and registration. Further, on March 24, 2003, Complainant sent Respondent correspondence regarding Complainant’s right in the mark ALICO and demanding that Respondent cease use of the mark and transfer the domain. Finally, it does not appear that Respondent currently offers any goods or services, nor does it appear that Respondent has a legitimate non-commercial or fair use of the confusingly similar domain name nor does it use ALICO as its company name. Rather Respondent’s company name appears to be ABC Corp.

Complainant further asserts that Respondent registered the domain name with actual and constructive knowledge of the Complainant’s use of the mark ALICO and ownership of the domain name <alico.com>, among others. Registration of a domain name with actual or constructive knowledge of its use as a mark suggests no rights or legitimate interests and can serve as evidence of bad faith. Complainant began using the ALICO mark in connection with its insurance and financial services long before Respondent registered the domain name <alicopakistan.com>. Prior to Respondent’s registration, Complainant’s use of the mark became famous and associated with high quality services throughout the industry as well as the consuming public. Consequently, Respondent should not be considered as having rights or a legitimate interest in the mark ALICO or in the domain name <alicopakistan.com>.

Complainant asserts that the disputed domain name was registered and is being used in bad faith because Respondent’s use of the domain name is likely to confuse and mislead consumers. Respondent had constructive and actual knowledge of Complainant’s rights in the ALICO mark, yet Respondent continues to use the ALICO mark in its domain name. This registration of the domain name with actual or constructive knowledge of its use can serve as evidence of bad faith.

Complainant further asserts that Respondent has made several public misrepresentations incorporating Complainant’s ALICO mark, thereby misleading and confusing consumers as to the services and even the existence of American Life Insurance Company in Pakistan and over the Internet. In this regard Complainant relies on the e-mail messages and newspaper advertisement referred to above. Complaint asserts that Respondent’s reservation of the disputed domain name and the reference to <alicopakistan.com> in letters and news notices shows an intent to attract and/or disrupt consumers who are actually looking for Complainant’s services provided under its well-known ALICO mark. Complainant believes the individuals behind the noted activities are related to Respondent since each of the incidents noted above makes reference to the domain name <alicopakistan.com>. Further, Respondent’s addition of the geographic term Pakistan to the ALICO portion of the mark does not add any uniqueness or distinguishing features to the Complainant’s existing ALICO trademark. Complainant asserts that these tactics amount to bad faith and invites the panel to conclude that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Complainant’s business and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Complainant asserts that Respondent’s use of Complainant’s trademark in its domain name, both online and in the natural world via misleading advertisements in communications, evidences Respondent’s bad faith registration and use of the domain name <alicopakistan.com>.

B. Respondent

The response in this case was filed by Naveed Hasan Pirzada of “Essential Links” (“Links”). Links asserts that Respondent, Alpine Business Consulting Corporation (ABC) Corp), is the legal owner of <alicopakistan.com> by virtue of having registered the disputed domain name on March 28, 2001. Links further asserts that its business is Alpine Industrial Consultants, Pakistan (abbreviated as ALICO). Links asserts that Complainant has no solid grounds or reasons for initiating a claim against it.

Links asserts that since the domain name was purchased, Respondent has not hosted a website because the business has been in the formation and development stages. Respondent asserts that it was not responsible for the events relied on by Complainant.

Links asserts that Respondent did not receive any objection about registration of the disputed domain name from Complainant until after two years from the original registration. Links further notes that Complainant has registered domain names <alicopakistan.net> and <alicopakistan.org> on September 11, 2002. Complainant also uses <alicopak.com> which was registered on May 22, 2000. Complainant also uses <alico-measa.com> for the middle east.

Links asserts that the acronym ALICO can be an acronym for several other businesses, and that Pakistan is an identity but not a generic name. Links cites several other businesses in Pakistan and elsewhere under the title of ALICO, including:

§ Anhui Lujiang Int’l Trade Co. (ALICO)

§ ALICO American Incorporation

§ Allied International Company (ALICO)

§ Aluminum International Co. (Pvt.) Ltd. (ALICO)

§ Allied Industries Corporation (ALICO)

§ Associated Logistics & Indenting Company (Pvt.) Ltd. (ALICO)

§ ALICO Trading Company

§ ALICO International

§ ALICO Exports (Pvt.) Ltd.

§ ALICO Manufacturers Pakistan Private Limited

§ ALICO Pipe Industries

§ ALICO Pvc Pipe Factory

§ ALICO Textiles Accessories (Pvt) Ltd

§ ALICO Video & Color Photos

§ ALICO Enterprises

§ ALICO & Sons

Links asserts that Respondent had no intention to confuse its business with that of Complainant, and that the “contradiction with any other business is truly coincidental.” Links asserts that Respondent has spent substantial time and efforts and has earned a reasonable repute using the domain name. Links further asserts that if the domain name is transferred to Complainant, Respondent will “endure financial as well as goodwill loss to our client” because “all their setup, print materials and other allied promotional activities are ready and their pre-launch marketing is already in progress.” Links also states that Respondent’s use of the domain name will not cause any harm to Complainant since its interests are quite different than those of Complainant.

C. Complainant’s Additional Submissions

Complainant submits that Respondent has not sufficiently demonstrated that ABC Corp has a legitimate interest or right in <alicopakistan.com>. Complainant admits the domain was registered to ABC Corp, not Alpine Business Consulting Corporation or its business, Alpine Industrial Consultants, Pakistan. Complainant notes that Respondent did not offer any evidence that its business name is Alpine Industrial Consultants, Pakistan other than the blanket statement from Essential Links to that effect. Respondent did not attach any documents verifying its corporate identity such as business documents, corporate filings, letterhead, business cards, brochures, marketing materials, etc. Respondent did not even submit a declaration to support its assertion of corporate existence or that it has a legitimate interest or right in <alicopakistan.com>. Instead, Essential Links states that Respondent “does not intend to be part of this issue.”

Complainant further points out that Respondent has filed no evidence whatsoever with respect to the alleged time and effort spent to create goodwill and to set up its promotional material. The evidence shows letterhead portraying AlicoPakistan.com as a  “member company of AIG.” AIG is Complainant’s parent company and has no relation whatsoever to Respondent.

Even assuming Respondent is not linked to the campaigns set out in Complainant’s evidence, Respondent has not demonstrated rights in the domain name. Respondent registered the disputed domain name on May 28, 2001, Respondent admits to never having posted any material to the website. Respondent therefore has been “sitting” on the domain for over two years. While Essential Links states that Respondent has pre-launch marketing material and that it has been in formation for two years, Respondent has submitted no evidence to substantiate these alleged activities. Such lack of action indicates no legitimate rights or interests in the domain.

Complainant further asserts that there is no evidence in the record and that Respondent has failed to establish that it is commonly known by the ALICO abbreviation. For this reason as well Respondent has demonstrated no rights or legitimate interests in the disputed domain name.

Respondent lists several other businesses that allegedly use the ALICO abbreviation for their business in Pakistan; however, these alleged third party uses are irrelevant, unsupported and are not for insurance related companies and therefore would be less likely to be confused with Complainant. Accordingly, Respondent’s listing of other entities does not demonstrate that Respondent has rights or legitimate interests in ALICO.

D. Respondent’s Additional Submissions

Respondent repeats that <alicopakistan.com> was registered on March 28, 2001 by ABC Corp, which is an acronym of “Alpine Business Consulting Corporation” and the parent company of “Alpine Industrial Consultants, Pakistan.” Respondent further repeats that events including the letterhead portraying AlicoPakistan.com as a member company of AIG and the advertisement which was published an in English daily of Pakistan and/or any other events were not originated by Respondent, and Respondent absolutely had no connection with these events directly or indirectly. Respondent suggests that these actions might have been created by any of the rivals of the American Life Insurance Company on behalf of <alicopakistan.com> for revenge purposes or “being self generated to acquire this domain by accusing so.” Respondent asserts that <alicopakistan.com> is not an ambiguous domain name since the objectives of Respondent’s business are entirely different than that of Complainant. Respondent repeats it assertions that there are other businesses using ALICO marks.

The remainder of this submission is merely a repetition of information already before the panel, and does not provide any new evidence or argument in response to Complainant’s additional submission.

FINDINGS

The panel finds as follows:

1. The domain name <alicopakistan.com> is confusingly similar to Complainant’s ALICO trademark.

2. Respondent does not have rights or legitimate interests in the domain name.

3. Respondent registered and is using the domain name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

Complainant has established registered and common-law rights in the mark ALICO. Complainant has numerous trademark registrations for ALICO, including at least two in Pakistan, which registrations predate Respondent’s registration of the disputed domain name. Complainant has therefore established rights in the ALICO mark.

Complainant argues that Respondent’s <alicopakistan.com> domain name is confusingly similar to Complainant’s ALICO mark because the disputed domain name appropriates Complainant’s entire mark and merely adds the geographic term “Pakistan” to the end of the mark. We find that the addition of a geographic term does not sufficiently distinguish the disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i) because the mark contains the dominant element of the domain name. See VeriSign Inc. verses Tanton, D2000-1216 (WIPO Nov. 16, 2000), (finding confusing similarity between Complainant’s VERISIGN mark and the verisignindia.com and verisignindia.net domain names where Respondent added the word India to Complainant’s mark). The disputed domain name, <alicopakistan.com>, therefore is confusingly similar to Complainant’s ALICO mark.

Rights or Legitimate Interests

The panel has noted and considered all of Complainant’s and Respondent’s arguments, and applying the tests set out in Policy ¶ 4(c), we find that Respondent does not have rights or legitimate interests in the domain name. While Respondent asserts that it has made preparations to use the domain name in connection with a business, Respondent has provided no evidence whatsoever to establish the existence of the business, much less the type of business or the preparations allegedly made for use of the domain name. As such, Respondent may not rely on Policy ¶ 4(c)(i). Equally, Respondent cannot rely on Policy ¶ 4(c)(ii) because there is no evidence before the panel that the Respondent’s business has been commonly known by the domain name. Lastly, the Respondent may not rely on Policy ¶ 4(c)(iii) because Respondent has not demonstrated that it is making a legitimate non-commercial or fair use of the domain name, but indeed asserts that it is making a commercial use of the name.

For these reasons, we find that Respondent does not have rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

With respect to this element, paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location

Policy ¶ 4(b)(i) and ¶ 4(b)(ii) do not apply in this case. While there is some evidence that Respondent may have registered the domain name to disrupt the business of Complainant, we are unable to conclude from the evidence that this was Respondent’s primary purpose within Policy ¶ 4(b)(iii). Neither does Respondent’s behavior fall squarely within Policy ¶ 4(b)(iv) because, while Respondent says it intends to put up a website,  Respondent does not actually appear to have put up a website using the disputed domain name to which to attract Internet users. This, however, does not end the matter. The four cited examples in Policy ¶ 4(b) are situations where, if the evidence exists, the panel must find bad faith. This does not, however, preclude the panel from finding that other circumstances amount to bad faith in a particular case. The paragraph says, “In particular, but without limitation.”

 

Complainant argues that Respondents behavior demonstrates that <alicopakistan.com> was registered and used in bad faith because after the domain name was registered Respondent held itself out as being related to Complainant on at least three occasions. While Essential Links, on behalf of Respondent, denies Respondent’s involvement in the e-mails, letters and newspaper advertisement submitted by Complainant in evidence, it is open to this panel to draw the inference, and we do draw the inference, that Respondent was responsible for these communications. We are assisted in coming to this conclusion by the total lack of any evidence from Respondent to prove any of its assertions about the existence of a legitimate business, the nature of the alleged business or preparations for the launch of the alleged business. Considering that at least one of the communications in question was sent to a number of Complainant’s AIG offices, it is also difficult for Respondent to assert that it was engaging in these activities without knowledge of the existence of Complainant and Complainant’s ALICO mark. We also find it difficult to believe that Respondent would accidentally not only use the same acronym as Complainant (ALICO), but that Respondent would also belong to a group of companies using the same abbreviation (AIG) as Complainant’s group of companies. The inference we draw from this evidence is that Respondent knew of the existence of Complainant, Complainant’s ALICO mark, and Complaint’s AIG group of companies when the Disputed Domain Name was registered and that Respondent intended to use the well-known ALICO mark for commercial gain by creating confusion with Complainant’s mark. This, in our opinion, amounts to bad faith within the meaning of the policy.

Lastly, we also concur with the panel in Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) where there was a finding of bad faith under Policy ¶ 4(b)(iv) even though Respondent had not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.”

Complainant therefore succeeds on the third element.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <alicopakistan.com> domain name be TRANSFERRED from Respondent to Complainant.

Anne M. Wallace, Q.C., Panelist
Dated: June 11, 2003

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