DECISION

American International Group, Inc. v. Kim Chung

Claim Number:  FA0306000161315

PARTIES

Complainant is American International Group, Inc., New York, NY (“Complainant”) represented by Claudia Werner Stangle.  Respondent is Kim Chung, Los Angeles, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aigprivatebankonline.com>, registered with Go Daddy Software, Inc.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 2, 2003; the Forum received a hard copy of the Complaint on June 3, 2003.

On June 5, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <aigprivatebankonline.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 June 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 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 @aigprivatebankonline.comby e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <aigprivatebankonline.com> domain name is confusingly similar to Complainant’s AIG and AIG PRIVATE BANK marks.

2. Respondent does not have any rights or legitimate interests in the <aigprivatebankonline.com> domain name.

3. Respondent registered and used the <aigprivatebankonline.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant offers a wide variety of sophisticated financial and investment services.  The AIG mark is an acronym for Complainant’s company name, American International Group, Inc.  Since 1968, Complainant has continuously used the AIG mark in connection with its member companies’ goods and services and with its websites located at the <aig.com>, <aigonline.com>, <aigdirect.com> and <aigprivatebank.com> domain names.       

Complainant holds numerous registrations for the AIG mark worldwide.  Complainant holds multiple registrations for the AIG mark on the Principal Register, including United States Patent and Trademark Office Registration Nos. 1,151,229, registered on Apr. 14, 1981; 1,273,845, registered on April 10, 1984; and 1,172,557, registered on Oct. 6, 1981.  In addition, Complainant’s member company holds Registration No. 480,032, registered on December 13, 2000, for the AIG PRIVATE BANK mark.

Respondent registered the <aigprivatebankonline.com> domain name on February 7, 2003.  Respondent is purporting to offer banking services and online banking services under the name “AIG PRIVATE BANK” and “AIG PRIVATE BANKING” at the website hosted at the disputed domain name. 

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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the AIG mark through registration with the U.S. Patent and Trademark Office and its continuous use of the mark.  Complainant has also established its rights in the AIG PRIVATE BANK mark through its Swiss registration of those marks.  See The Men’s Wearhouse, Inc. v. Brian 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”).

Respondent’s <aigprivatebankonline.com> domain name is confusingly similar to Complainant’s marks.  Respondent merely added to Complainant’s entire AIG PRIVATE BANK mark the word “online”, which is a descriptive word that does not change the overall impression of Complainant’s mark.  Thus, the Panel finds that Respondent’s domain name is not distinguishable from Complainant’s mark.  See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to file a response in this proceeding.  Thus, the Panel may accept all reasonable allegations and inferences presented by Complainant as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (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).

Respondent is not commonly known by the disputed domain name.  There is no evidence at the disputed domain name nor in the WHOIS information that indicates that Respondent is commonly known by the <aigprivatebankonline.com> domain name.  Furthermore, Complainant has not authorized or licensed Respondent to use its marks for any purpose.  Thus, the Panel reasonably infers that Policy ¶ (c)(ii) does not apply to Respondent.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). 

Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).  Respondent is diverting Complainant’s potential customers to a website located at the <aigprivatebankonline.com> domain name.  The website located at the disputed domain name uses Complainant’s mark in an attempt to appear to be offering services on behalf of Complainant.  There is no evidence that Respondent is associated with any registered bank or any other financial institution.  The Panel reasonably infers that Respondent is using Complainant’s well-known marks to confuse and exploit Internet users who are attempting to attain Complainant’s services.  Thus, Respondent’s use of the disputed domain name does not evidence a bona fide offering of services nor a legitimate noncommercial or fair use of the domain name.  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, in hopes of attracting Complainant’s customers, thus finding no rights or legitimate interests).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is trying to attract Internet users to the <aigprivatebankonline.com> domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the sponsorship or affiliation of Respondent’s website.  The disputed domain name, which incorporates Complainant’s entire mark and then adds a generic word, is confusingly similar to Complainant’s marks.  Respondent is using Complainant’s marks to appear to be offering the same services as Complainant at the website located at the disputed domain name.  It is reasonable for the Panel to infer that Respondent is commercially benefiting by attracting Internet users to the disputed domain name.  Thus, Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).     

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Tyrus R. Atkinson, Jr., Panelist

Dated:  July 14, 2003

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