WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American International Group Inc. v. Spiral Matrix , Titan a/k/a Titan Net , NOLDC, Inc.
Case No. D2006-0839
1. The Parties
The Complainant is American International Group Inc., New York, New York, United States of America, represented by Leydig, Voit & Mayer, Ltd., United States of America.
The Respondent is Spiral Matrix, Titan a/k/a Titan Net, NOLDC, Inc., Eldoret, Kenya; Eldoret, Kenya; New Orleans, Los Angeles, United States of America.
2. The Domain Names and Registrar
The disputed domain names:
, , , , , , , , , , , , , , , , , , , , ,
are registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June�30,�2006. On July�3,�2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On July�3,�2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint received on August�15,�2006, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August�18,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September�7,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on the September�8,�2006.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on September�18,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph�7.
4. Factual Background
The Complainant, American International Group, Inc. is an international company and one of the largest insurance companies in the United States and the world. The group owns companies operating in the following fields: General Insurance including commercial and Industrial Insurance, Life Insurance and retirement services, financial services and asset management. The group and its member companies will be referred to in this decision collectively as “the Complainant”.
The Complainant uses various trademarks to promote its products and services particularly what it refers to as the family of “AIG” marks representing the official acronym of the group as well as other registered trademarks of the company including AIG, AMERICAN GENERAL, AMERICAN INTERNATIONAL GROUP, AMERICAN INTERNATIONAL, AMERICAN INTERNATIONAL SOUTH INSURANCE COMPANY and AMERICAN INTERNATIONAL COMPANIES. The Complainant has provided a list of the registration of the trademarks in the United States and other countries.
The Complainant has registered various domain names containing the trademarks including , , , and . The Panel has checked these websites and found them to be active.
The disputed domain names subject to this claim all appear to be registered, according to the registrar’s records, by one of the following entities: Spiral Matrix, Titan Net or NOLDC, Inc.
5. Parties’ Contentions
A. Complainant
I Procedural Issues:
The Complainant claims that though the Registrar’s records show that the domain names are registered with different entities, the Respondent is one legal entity operating through various aliases and thus the domain names should be included in one complaint. In support to its claim, the Complainant refers to prior WIPO decisions involving the same entity particularly Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc., a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890. The panel decided in that case to include the twenty-two disputed domain names registered under various names including Spiral Matrix, Titan Net and NOLDC, Inc. in one complaint as they were aliases of the same legal entity: Kentech, Inc. The panel decision was based on similarity in the contact details, links to similar websites (for Spiral Matrix and Titan Net), or prior ownership of the website by Kentech Inc. (for NOLDC, Inc.).
In this case, the Complainant provides details on the registration owner of the disputed domain names to establish the connection to Kentech, Inc. The disputed domain names listed in a table in the Complaint as numbers 1-22 (excluding number 11) are listed as registered in the name of Spiral Matrix and Titan Net which show similar contact details. The domain name no.11 listed as currently registered in the name of NOLDC, Inc., which was originally owned according to the claimant in the name of Spiral Matrix or Titan Net, is linked to a website with identical layout as that of the other websites, and is offered for sale on K.
For the reasons listed above, the Complainant requests the combination of all the domain names in one complaint.
II Substantial Issues:
1. The Complainant’s rights in various trademarks and service marks:
The Complainant bases its Complaint on the facts outlined in the Factual Background section above. The Complainant emphasizes its use the trademarks connected to its websites, and the large sums of money invested to create and maintain the goodwill associated with the AIG mark. The Complainant confirms it has sought and obtained trademark registrations with the United States Patent and Trademark Office and in Trade Mark offices worldwide. The reference numbers of some of the registrations and of advertisement campaigns and promotions linked to the mark are extensively outlined in the Complaint.
The Complainant claims that:
2. The disputed domain names are identical or confusingly similar to the Complainant’s trademarks:
The disputed domain names are confusingly similar to the Complainant’s trademarks as each of the domain names incorporates one of the Complainant’s trademarks to which is added in some cases a generic term referring to the Complainant’s goods and services.
Various decisions have established that including a trademark in its entirety is sufficient per se to establish confusing similarity with the trademark, and that combining the trademarks with generic terms does not change the overall impression of the trademarks.
The disputed domain names are linked to websites featuring the Complainant’s trademarks and information and links to financial and insurance services.
3. The Respondent has no right or legitimate interests in respect of the domain names:
The Respondent should not be considered as having rights or legitimate interest in the disputed domain names. The Respondent cannot establish prior use to the domain names for offering goods and services or that it has legitimate non-commercial or fair use of the disputed domain names without the intention of misleading the customers.
The Respondent had constructive knowledge of Complainant’s use of the trademarks due to its public prior use of the trademarks in relation to high quality services throughout the financial and insurance services industry and previous contact between Complainant and Respondent.
4. The domain names were registered and are being used in bad faith:
Respondent is using the Domain Names to attract Internet users to its websites by creating content that can be confused with the Complainant’s mark. The Respondent is not using its domain names actively, instead a redirection service is provided by the Registrar which links to websites providing the same line of services. This in addition to the use of the Complainant’s trademarks harms Complainant and constitutes the bad faith registration and use of the disputed domain names.
In addition, the Respondent’s bad faith is established by the Respondent’s history of cybersquatter preventing legitimate trademark holders form reflecting their marks in corresponding domain names.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A Identical or Confusingly Similar
As established by the submitted records, the Complainant owns the right to use the trademarks set out in the Factual Background in the United States and various other jurisdictions.
All the disputed domain names follow in their construction the same pattern. Each disputed domain name includes one of the following registered trademarks of the Complainant: AMERICAN GENERAL, AMERICAN INTERNATIONAL COMPANIES, AIG, and AMERICAN INTERNATIONAL. In addition to the trademarks, the domain names include what can be defined as generic terms such as “insurance”, “finance”, “auto” or geographical indications such as “India” and “Florida”.
The use of generic terms is not sufficient per se to negate the confusing similarity of the domain name with the Complainant’s trademarks. (See Educational Testing Service v. Jong-Cheol Seo, WIPO Case No. D2006-0056; eBay, Inc vs. Progressive Life Awareness Network, WIPO Case No. D2001-0068). While in certain cases the use of an additional term may help in reducing confusing similarity between a domain name and a trademark, the generic terms used in this instance increase the probability of confusion for the average customer. In addition to being non-distinctive, descriptive or generic, these terms can all be characterized as related in some way to the business of the Complainant described above (i.e. Insurance, Finance …etc).
These descriptive terms, combined with the reproduction of the entire trademark of the Complainant increase the confusing similarity of the disputed domain names with the marks of the Complainant.
Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks as per the terms of paragraph 4(a) (i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out the initial prima facie case that the Respondent lacks rights or legitimate interests in the domain names. The Complainant further contends that the Respondent cannot establish any of the circumstances establishing his legitimate rights as per article 4(c) of the Policy.
The Complainant considers that the Respondent cannot prove any demonstrable preparations to the use of the disputed domain names in connection with a bona fide offering of goods or services prior to this complaint. Furthermore, the Respondent would not be able to establish being previously known commonly by the domain name nor that is it making a legitimate noncommercial or fair use of the domain name.
By making out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proof as per the WIPO consensus on the matter shifts to the Respondent. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d v. WACHEM d.o.o, WIPO Case No. D2004-0110).
The Respondent in this case cannot establish its rights or legitimate interests not only due to the lack of response to this Complaint, but also due to the following considerations:
1. The actual use of the domain names by the Respondent, which is limited to passive holding and allowing diversion services by the Registrar, does not establish any rights or legitimate interests in the disputed domain names.
2. The use of the trademarks of the Complainant in the disputed domain names is not authorized by the Complainant. This absence of authorization from the legitimate owner of the trademarks that are reproduced in full in the disputed domain names points to the lack of legitimate interest or right of the Respondent in the disputed domain names.
Based on all of the above factors, the Panel finds no rights or legitimate interest for the Respondent in the disputed domain names.
C. Registered and Used in Bad Faith
In determining whether the Respondent had registered and used the disputed domain names in bad faith, the Panel considered various factors:
1. Factual Grounds in relation to this Particular Case:
a. The Respondent was aware of the existence of the trademark prior to the registration of the domain names:
The Complainant has established that it is a well-known international company that has invested large sums in advertising and promoting its trademarks in a variety of manners including major televised events, popular prime time programs and daytime shows and widely circulated magazines. These campaigns conferred on the trademarks an international reputation which we presume must have been known to the Respondent.
As the Respondent did not refute the above presumption, we believe this to be a compelling indication that it has registered and used the disputed domain names in bad faith while having at least constructive knowledge of the Complainant’s rights in the trademarks.
b. The Respondent was using the domain name to attract, for commercial gain, leading Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark:
The Complainant alleges that the disputed domain names are currently used to direct Internet users to other websites used to search for service providers in the same lines of products offered by the Complainant. The Complainant acknowledges that this diversion is provided by the Registrar due to the non-use of the domain name by the Respondent. Nevertheless, according to the Complainant, the combination of element (a) above with the indirect diversion is as harmful to the Complainant as a direct diversion undertaken by the Respondent.
However, in this Panel’s view causing damage to the Complainant does not as such constitute proof of the bad faith of the Respondent. To constitute such proof this Panel considers that the Respondent would need to be found directly or indirectly responsible for the damage caused; there would need to be a clear link between the damage and the intentions of the Respondent. Such a link is not in the Panel’s view immediately clear in the present case. Therefore, the other circumstances must be examined before concluding on the issue of bad faith.
The Panel considers that the registration and use of the disputed domain names by the Respondent in the circumstances of this case may be construed as “passive holding.” This Panel was guided by various previous WIPO Decisions in this regard. In particular, the Panel refers to Telstra Corporation Limited v. Nuclear marshmallows, WIPO Case No. D2000-0003 where the panel considered that the particular circumstances of the case under examination lead the panel to conclude that the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith.
Similarly, the circumstances of this case lead the panel to believe that the passive holding by the Respondent of the disputed domain names, in the context of various other facts, constitutes registration and use in bad faith. In reaching this conclusion, the Panel noted the following:
(i) The Complainant’s trademarks are registered, have a strong reputation and are widely known in the United States and other countries;
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated “good faith” use by it of the domain names. This can also be concluded from the Respondent’s lack of response to this complaint.
(iii) The Respondent has taken active steps to conceal its true identity as it appears from the use of different trade names (Spiral Matrix, Titan aka Titan Net and NOLDC Inc. all apparently concealing a single entity)
2. Factual Grounds in relation to the Respondent’s General Conduct:
The Panel finds that the Respondent is acting in bad faith since as per Paragraph 4b(iv) of the Policy he has engaged in a pattern of such conduct by registering various domain names in order to prevent the trademark owners from reflecting their marks in a corresponding domain name. The Complainant refers to various WIPO Cases where this same Respondent was found by WIPO Panelists to be registering and acting in bad faith including: The Common Fund for Nonprofit Organizations v. Modern Limited-Cayman Web Development a/k/a Cayman Trademark Trust, WIPO Case No. D2005-1250, Societe des Hotels Meridien v. Spiral Matrix/Kentech Inc, WIPO Case No. D2005-1196; Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145; Dr. Ing. h. c. F. Porsche AG v. Kentech, Inc. a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890; Finaxa S.A. v. Spiral Matrix, WIPO Case No. D2005-1044 ; and The Sutton Corporation v. Spiral Matrix, WIPO Case No. D2006-0167.
For all of the above considerations, the Panel finds the bad faith of the Respondent in acquiring and using the disputed domain names established.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names:
, , , , , , , , , , , , , , , ,, ,, ,, be transferred to the Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: October�8,�2006
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