American International Group, Inc. v.
Debra Speyer
Claim Number: FA0502000422815
PARTIES
Complainant
American International Group, Inc. (“Complainant”),
is represented by Caroline L. Stevens, Two Prudential Plaza, Ste. 4900,
Chicago, IL 60601. Respondent is Debra Speyer (“Respondent”), Two Penn
Center Plaza, Ste. 200, Philadelphia, PA 19102.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aigfraud.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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
February 16, 2005; the National Arbitration Forum received a hard copy of the
Complaint on February 17, 2005.
On
February 17, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aigfraud.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
February 21, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 14, 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@aigfraud.com by e-mail.
A
timely Response was received and determined to be complete on March 14, 2005.
Complainant
submitted a timely additional submission to the National Arbitration Forum on
March 17, 2005.
On March 24, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
American International Group, Inc. through its member companies, uses the
"AIG" trademark in connection with its various financial and
insurance services. Complainant offers
insurance services related specifically
to fraud through several of its subsidiaries. In addition, American
International Group, Inc. and its member companies use the AIG name as a
corporate name. Complainant is the leading insurance and financial services
organization with operations in more than 130 countries and jurisdictions. As
such, its "AIG trademark has earned very valuable goodwill and is known
worldwide. Complainant bases this Complaint on its numerous trademark
registrations for the "AIG mark, including United States Registration Nos.
1,15 1,229, 1,273,845; 1,851,675; and 2,320,184, and numerous other trademark
registrations Complainant owns worldwide for the AIG mark. Complainant also uses the AIG mark in
connection with its website at <aig.com>, among others.
Since
at least as early as 1968, Complainant, through its member companies, has used
the AIG mark in connection with financial and insurance services, including
insurance services related to fraud. For example, AIG World Investigative
Resources, Inc. ("AIGWIR"), a subsidiary of Complainant, offers
insurance claim fraud prevention, detection, and recovery services. Furthermore, Complainant's "Fraud
Information Division" protects Complainant's customers from those who
would commit insurance fraud by assisting in prevention, detection and
prosecution of fraudulent claims.
Complainant, through its member companies, also plans to use the AIG
FRAUD SAFEGUARD mark with insurance underwriting services for fraud,
embezzlement and theft, and has filed U.S. application Serial No. 781,521,658
to cover these services.
Complainant,
through its member companies, also offers fraud services under marks that,
while in and of themselves do not incorporate the AIG mark, are used in
conjunction with the AIG mark. Since at
least as early as 2001, Complainant has used the WEBMERCHANTGUARD mark for
insurance underwriting services to protect internet merchants against credit
card fraud. Since at least as early as
2000, Complainant has used the CRIME ADVANTAGE mark with employee fraud
insurance services. These marks are used in conjunction with the AIG mark.
Complainant
has invested large sums of money to create, maintain, and promote the goodwill
associated with the AIG mark. Complainant has spent time and money advertising
and promoting the products and services offered in connection with the AIG mark
around the world by using the AIG mark on various advertising and promotional
materials, including but not limited to, print advertisements, product
brochures, television advertising and its website <aig.com>, among
others.
As
a result of Complainant's and its member companies' advertising and promotional
efforts for the services of Complainant's member companies, as well as their
dedication to providing quality services, Complainant's AIG mark is favorably
recognized and relied upon by the relevant trade and consuming public as
indicating high quality services originating exclusively from Complainant and
its member companies. Due to such efforts, Complainant's AIG mark has earned
very valuable goodwill and is well known worldwide.
To
protect the extensive goodwill symbolized by Complainant's AIG mark, Complainant
has sought and obtained trademark registrations for the mark in the United
States Patent and Trademark Office and in Trade Mark offices worldwide. Some of
the registrations of the AIG marks include: Registration Nos. 1,151,229;
1,273,845; 1,851,675; and 2,320,184. In
addition, Complainant owns approximately 600 trademark registrations
incorporating the AIG mark worldwide.
Complainant
also owns registrations that cover services related to fraud for marks that,
while not incorporating the AIG mark themselves, are used in conjunction with
the AIG mark. These registrations include Reg. Nos. 2,790,248
(WEBMERCHANTGUARD) and 2,886,706 ("CRIME ADVANTAGE").
AIG's
revenues in 2003 were over $81 billion. Annually, AIG spends millions of
dollars
in
advertising and promoting its member companies' goods and services under the
AIG mark. In 2003 alone, Complainant
prominently advertised its AIG mark and brand name in the NCAA basketball
tournament, the Academy Awards (which is the second most-watched show in television),
the Triple Crown Horse races, the NBA playoffs, the season finale of Survivor,
the French and U.S. Open tennis events, US Open Golf tournament, a number of
late season NFL football games, NCAA football games scheduled around
Thanksgiving, the ALCS, NLCS and World Series for Major League Baseball, a
number of popular holiday programs like Rudolph The Red-Nosed Reindeer and
Charlie Brown Christmas.
Complainant
also worked out deals with the broadcast networks where an AIG advertisement
would appear immediately at the moment the basketball game goes into overtime.
In addition to its branding significance (this is the moment when you need to
rely on your "go-to players," like AIG), the time slot typically
reaches more consumers than any other moment of the game. A good example of
this strategy was seen when AIG's "overtime" advertisement ran just
after the bottom of the ninth inning of the seventh game of the ALCS between
the Yankees and the Red Sox. In the 2004 Super Bowl, Complainant negotiated to
have its advertisement run in the last commercial slot of the game, with no
other advertisements attached to it to distract the viewer. More viewers watched Complainant's
advertisement than any other advertisement that ran during the Super Bowl.
In
addition to major national televised campaigns, Complainant has run print
advertisements prominently featuring its AIG marks in nationally circulated
news publications such as The New York Times, Fortune, Time and the like.
(1) On
or around November 30, 2004, Complainant became aware that Respondent had
registered the domain name <aigfraud.com>, which prominently features
Complainant's AIG mark. Complainant reviewed the website linked to the domain
name, and learned that Respondent had linked the domain name to a webpage for
the Go Daddy Software, Inc. registrar, which makes no reference to Complainant
or to Complainant's services. Long
after Complainant, through its member companies, had been advertising for and
providing financial and insurance services under the AIG mark, Respondent,
without any authorization from Complainant, registered and began using the
domain name <aigfraud.com> and kept it linked to a webpage for the
Go Daddy Software, Inc. registrar.
Therefore,
on December 20, 2004, counsel for Complainant sent a letter via e-mail with a
confirmation copy sent via Federal Express to the address listed for the
Respondent in the WHOIS information for the domain <aigfraud.com>.
In its letter, Complainant advised Respondent of Complainant's rights in its
AIG mark, and requested that Respondent explain its reasons for using AIG in
the <aigfraud.com> domain name, and explain the goods and/or
services offered by Respondent.
Respondent did not respond to Complainant's initial correspondence.
Having
received no response, counsel for Complainant sent a follow-up letter via
e-mail with confirmation copies sent via Federal Express to Respondent on
December 28, 2004. On December 28,
2004, Respondent sent Complainant a letter stating that she had registered the
domain name so people could use the domain name and linked website to contact
her if they want to bring an action against Complainant. However, more than three months after
Complainant's registration of the domain name, the domain name remains linked
to Go Daddy Software, Inc.'s webpage, which does not provide any explanation
for use of the AIG mark in the domain name.
The
<aigfraud.com> domain name is confusingly similar to Complainant's
AIG trademark. Consequently, Internet users are likely to mistakenly believe
that the domain name links to information and/or services provided by or
affiliated with Complainant, and that the website regards Complainant's
insurance services related to fraud. Respondent's domain name incorporates
Complainant's AIG mark in its entirety, along with the standard English word
"fraud." Numerous ICANN
decisions have held that the addition of a non-distinctive, descriptive, or
generic term, such as "fraud," does not change the overall impression
of a mark. See American International
Group, Inc. V. Lobsang Marques, FA 126832 (Nat. Arb. Forum Dec. 6, 2002)
(holding that the domain <aigfinancial.net> was confusingly similar to
Complainant's AIG mark, despite the addition of the descriptive term
"financial," because Complainant's AIG mark is well-known throughout
the world and the term "financial" is regularly associated with
Complainant).
For
example, in The Royal Bank of Scotland Group plc v. natwestfraud.com and
Umang Malhotra, D2001-0212 (WIPO June 18, 2001), a three-member panel found
that the use of another party's trademark with the common English word
"fraud" was likely to cause confusion. In this case, the respondent had registered the
<natwestfraud.com> domain name, combining the NATWEST trademark and the
word "fraud." Although the respondent argued that it used to word
"fraud" to indicate that the domain name was to be used as a
complaint site against Natwest, the panel stated, "The use of the word
'fraud' does not necessarily imply anything derogatory of the Complainant. The
site could be taken as one designed to publicize frauds committed upon
Natwest."
The
panel also noted that, once people accessed the website linked to the
<natwestfraud.com> domain name, it was clear that the website pertained
to frauds allegedly committed by (and not upon) Natwest. Notwithstanding the fact that the content of
the website might have cleared up any confusion, the panel still believed that
confusion was likely, because use of the common English word "fraud"
was insufficient to obviate consumer confusion.
Like
the <natwestfraud.com> case, because Respondent uses Complainant's famous
AIG mark with the word "fraud," confusion is likely. Even though
Respondent alleges that the domain name is to be used by people to contact her
if they want to bring an action against Complainant, the use of the word fraud
does not necessarily communicate this purpose. The <aigfraud.com>
domain name is even more likely to cause confusion than the
<natwestfraud.com> domain name, because Complainant actually offers
services related to fraud, namely, insurance coverage for fraud. As the <aigfraud.com>
domain name is not linked to an active website, consumers that go to the domain
name looking for AIG may be frustrated and may not continue their search for
AIG.
Furthermore,
even if Respondent links the <aigfraud.com> to a website that,
when accessed, may indicate that the website is not affiliated with
Complainant, the mere usage of Complainant's trademark as part of the domain
name is likely to divert online traffic and cause "initial interest
confusion." See Brookfield
Communications, Inc. v. West Coast Ent. Corp., 174 F.3d 1036 (9th Cir.
1999) (holding that use of the domain name <moviebuff.com> was actionable
initial interest confusion because it diverted online traffic).
In
summary, Respondent's domain name <aigfraud.com> is clearly
confusingly similar to Complainant's AIG mark, because the domain name
prominently features Complainant's AIG trademark, because Complainant offers
services related to fraud, and because the linked webpage does not explain the
reason for using the AIG mark as part of the domain name, thereby drawing
consumers to the website only to have their expectations of finding information
concerning Complainant frustrated. Respondent's use of AIG as part of the
domain name is likely to cause confusion amongst consumers as to the source of
the services provided through Respondent's website.
Based
on the foregoing, it is clear that confusion is likely.
(2)
Respondent should not be considered as having rights or legitimate interests in
the <aigfraud.com> domain name.
Respondent does not have rights or a legitimate interest in a domain
name if Complainant has prior rights in the trademark that precede Respondent's
registration of the domain name, if the Respondent is not a licensee of
Complainant, and if Respondent has not received permission or consent to use
the trademark. See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27,2000).
Respondent
in this case does not have rights or a legitimate interests in the domain name,
because Complainant has superior rights in the AIG mark. Respondent only
recently registered the domain name on September 4, 2004. Thus, Respondent's
use of the AIG mark began long after Complainant's use of the AIG mark.
Furthermore, Respondent is not a licensee of Complainant, and Complainant did
not authorize or consent to Respondent's use of the "AIG" mark in
connection with Respondent's domain name.
Moreover,
Complainant began using the AIG mark in connection with its services long
before Respondent registered the domain name <aigfraud.com>, and
Respondent admitted to having actual knowledge of Complainant's and its AIG
trademark. 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. See The
Prudential Insurance Company of America v. Stonybrook Investments, Ltd, FA
100182 (Nat. Arb. Forum Nov. 15, 2001), see also Samsonite
Corporation v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17,2000).
Respondent
has admitted to using the <aigfraud.com> domain name to capitalize
on the fame of the AIG mark, thereby resulting in her own economic benefit.
Such a purpose does not give Respondent rights or a legitimate interests in the
AIG mark, and it is not necessary for Respondent to use the AIG mark as part of
a domain name in order to provide her services.
Consequently,
Respondent should not be considered as having rights or legitimate interests in
the AIG mark or in the domain name discussed above.
(3)
The domain name <aigfraud.com> was registered and is being used in
bad faith by Respondent. Respondent admitted to being aware of Complainant's
rights in the AIG mark when she registered the domain name at issue. Respondent
admitted to using the domain name to communicate with people familiar with
Complainant's trademark. As noted above, registration of a domain name with
actual knowledge of its use as a mark suggests no rights or legitimate
interests and can serve as evidence of bad faith. See Prudential Insurance
Company of America v. Stonybrook Investments, Ltd., FA 100182 (Nat. Arb.
Forum Nov. 15, 2001); see also Samsonite Corporation v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17,2000).
In
addition, Respondent's registration of Complainant's famous trademark in its
entirety as part of its domain name is evidence of bad faith. See The Neiman Marcus Group, Inc. v. Huh
Jinwang, FA109047 (Nat. Arb. Forum May 17, 2002) (finding bad faith in
registering domain name <neimanmarcus.net>); se also Cellular One
Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1)
the domain name contains Complainant's mark in its entirety, (2) the mark is a
coined word, well-known and in use prior to Respondent's registration of the
domain name, and (3) Respondent fails to allege any good faith basis for use of
the domain name).
Furthermore,
Respondent is "sitting on" the domain name. That is, since Respondent
registered
the domain name, Respondent has not posted any material, and used the domain
name only to link to Go Daddy Software, Inc.'s webpage. Such lack of action has
been held to indicate no rights or legitimate interests in a domain. See Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the disputed domain where Respondent merely passively held the domain name); see
also Aircraft Owners & Pilots Association v. Albanian Oil Paintings
& Antiques, FA 94183 (Nat. Arb. Forum Mar. 30, 2000) (finding no
legitimate business interest in the disputed domain due to Respondent not using
the name).
In
summation, Complainant owns valid, protectible rights in the AIG trademark, and
Respondent has registered a domain name that is confusingly similar to
Complainant's AIG mark without rights or legitimate interests in the mark or in
the domain name. Further, Respondent has incorporated Respondent's famous
trademark in its entirety as party of the domain name, and Respondent is merely
sitting on the domain name. Therefore, according to Paragraph 4(b) of the ICANN
Uniform Domain Name Dispute Resolution Policy, Respondent has acted in bad
faith.
B.
Respondent
This
domain name was to be linked to the website at <wallstreetfraud.com> and
ultimately linked to a website dealing with insurance fraud. To date this
domain name and other domain names have not been linked due to letters received
from AIG. <Wallstreetfraud.com> is a website that provides consumers with
information and services regarding their rights in bringing lawsuits against
brokerage firms for their fraudulent actions.
<Wallstreetfraud.com> is owned and operated by the Law Offices of
Debra G. Speyer, my law firm. I have expanded my law practice to represent
individuals who have been defrauded by insurance companies. AIG is one of the
firms that I will be bringing actions against.
AIG
recently agreed to pay $126 million to settle allegations that it helped
clients to commit accounting fraud. AIG is also among several large insurance
companies named in a civil lawsuit by New York’s Attorney General’s office
regarding bid rigging and taking payoffs from insurance firms in return for
directing business their way. AIG has demonstrated that its practices have been
fraudulent.
The
<aigfraud.com> website will describe the fraud perpetrated by AIG
and advise consumers what their rights are to bring actions against AIG. AIG’s
own fraudulent actions have taken this domain name out of the
"protected" area that AIG argues it is entitled to. If the Administrative
Panel rules in favor of AIG, it will be sending a strong message to firms that
companies such as AIG can defraud the public and be shielded by their actions.
C.
Additional Submissions
For
clarification purposes, Complainant does not object to Respondent's intended
use of the domain name <wallstreetfraud.com>, as described in
Respondent's Response. Complainant is not attempting to deny Respondent a forum
to express her views concerning Complainant or any other party. Further,
Complainant does not own trademark rights in the WALL STREET mark.
Notwithstanding, it is not necessary for Respondent to use the <aigfraud.com>
domain name for her purposes. Her use of the website linked to the <aigfraud.com>
domain name as a forum for voicing opinions on insurance fraud is likely to
confuse consumers, because Complainant sells fraud insurance.
Complainant
objects to the claims made in paragraph two of Respondent's response, because
they are not relevant to this proceeding and are not accurate.
Finally,
a ruling in this matter in Complainant's favor would not, as Respondent
suggests, send a message to firms such as Complainant that they can shield
knowledge of improper action. Rather, a
ruling in Complainant's favor would send a message to the public that domain
names cannot be registered in bad faith that are confusingly similar to
trademarks owned by other parties. Even
if the Panel rules in Complainant's favor, Respondent will still be able to
achieve her goals of disseminating information concerning alleged fraud.
Respondent will simply have to do so through a domain name that is not
confusingly similar to Complainant's trademark.
FINDINGS
I make the following findings:
(1)
the domain
name registered by Respondent is identical or confusingly similar to a trademark
or service mark in which Complainant has rights;
(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.
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 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;
(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.
Complainant has
established rights in the AIG marks and marks incorporating AIG through
registration with several trademark authorities across the world, including the
United States Patent and Trademark Office (e.g., Reg. No. 1,151,229, issued April
14, 1981; Reg. No. 1,172,557, issued October 6, 1981; Reg. No. 1,062,446,
issued March 29, 1977). Complainant
began using the AIG mark in connection with various financial and insurance
services, including services related to insurance fraud through its member
companies since as early as 1968. 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.).
Complainant has
used the AIG mark in commerce since 1968.
Complainant has established common law rights in the mark through its
continuous use in commerce. See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also
Fishtech v. Rossiter, FA 92976
(Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights
in the mark FISHTECH which it has used since 1982).
The domain name
is confusingly similar to Complainant’s AIG mark because the domain name fully
incorporates the mark and merely adds the descriptive term “fraud,” which describes
a service Complainant’s business offers (not committing it, but investigating
it). While Complainant provides
services related to fraud detection and investigation, it has not sought (or
obtained) a trademark on the phrase “AIG fraud.” The addition of a descriptive term such as “fraud” which also
describes part of Complainant’s business does not change the overall
impression of the mark. See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term); see also Am. Online, Inc. v. Anytime
Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding
that Respondent’s domain names, which incorporated
Complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity); see
also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity).
This Panel’s decision might well have been different on this factor if
the second word in the domain name did not generically describe an aspect of
Complainant’s business because there would have been no confusion.
The addition of the generic top level domain “.com” in the domain name is
irrelevant in determining whether the domain name is confusingly similar to
Complainant’s mark. See Sony
Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied); see
also Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant).
Upon discovering Respondent’s use of the <aigfraud.com>
domain name, Complainant sent Respondent a letter requesting that
Respondent explain its reasons for using the AIG mark in the disputed domain
name and to explain the goods or services offered by Respondent. After ignoring the initial request,
Respondent replied the disputed domain name was registered for the public to
use the linked website (something that is very easy to do) at the domain name
to contact Respondent if they desired to bring legal proceedings against
Complainant. No web site was ever
linked to <aigfraud.com>, despite the domain name being
created on October 28, 2004.
Respondent’s response is written on Respondent’s
letterhead, which states, “Law Offices of Debra G. Speyer” and “Bar Member: PA,
NY FL, D.C., CT.” Respondent’s use of a
domain name similar to another’s mark in order to solicit and attract business
does not constitute 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). Respondent lacks rights and
legitimate interests in the domain name because Respondent never established a
web site, linked to a web site nor made a bona fide offering of goods
and services. See MSNBC
Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using Complainant’s
mark by redirecting Internet traffic to its own website); see also Pfizer,
Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding
that because the VIAGRA mark was clearly well-known at the time of Respondent’s
registration of the domain name it can be inferred that Respondent is
attempting to capitalize on the confusion created by the domain name’s
similarity to the mark).
Respondent asserts the domain name will be used to
solicit business for Respondent’s law firm by linking to another web site. More than three months after Respondent’s
registration of the domain name, the domain name remains linked solely to Go
Daddy Software, Inc.’s “parking” web page, which does not provide any
explanation for the use of the AIG mark (or bring Respondent any business for
that matter). Respondent failed to
provide evidence of any demonstrable preparations to use the web site, causing
the Panel to conclude Respondent has not acquired any rights to the domain
name. See Open
Sys. Computing AS v. Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish
rights and legitimate interests in the domain name where Respondent mentioned
that it had a business plan for the website at the time of registration but did
not furnish any evidence in support of this claim); see also Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that Respondent had no rights or
legitimate interests where he decided to develop the website for the sale of
wall products after receiving Complainant’s “cease and desist” notice); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that when Respondent declares its intent to develop a website,
“[Policy ¶]4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of
such preparations to use the domain name, and 2) that such preparations were
undertaken ‘before any notice to [Respondent] of the dispute’”).
This Panel’s decision might well have been different on this factor if
the domain name had been used for some demonstrable purpose.
There is nothing in the Record or the WHOIS
database that indicates that Respondent is currently known by the disputed
domain name, pursuant to Policy ¶4(c)(ii).
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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark).
The <aigfraud.com> domain name was registered and is being used
in bad faith by Respondent as evidenced by Respondent’s admission that
Respondent had actual knowledge of Complainant’s mark and was using the domain
name to capitalize on Complainant’s mark and communicate with people familiar
with Complainant’s mark. Registration
of a domain name that is confusingly similar to another’s mark with actual or
constructive knowledge of another’s rights in the mark evidences bad faith
registration and use pursuant to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. 2002) ("[w]here an alleged infringer chooses
a mark he knows to be similar to another, one can infer an intent to
confuse"); 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”).
Respondent is
appropriating a domain name that is confusingly similar to Complainant’s mark
to attract Internet users for commercial gain, pursuant to Policy
¶4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of
Complainant’s marks with the domain name, consumers will presume the domain
name is affiliated with Complainant; Respondent is attracting Internet users to
a website, for commercial gain, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, or endorsement of
Respondent’s website); see also Alitalia
–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23,
2000) (finding bad faith where Respondent made no use of the domain name in
question and there are no other indications that Respondent could have
registered and used the domain name in question for any non-infringing
purpose); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶4(b)(iv) where Respondent linked <drmath.com>, which
contains Complainant’s Dr. Math mark, to a website run by Respondent, creating
confusion for Internet users regarding the endorsement, sponsorship, of
affiliation of the website).
Respondent is
passively holding the disputed domain name, does not use the domain name for
email, does not use the domain name for e-commerce, has not established a web
site, and uses the domain name only to link to Go Daddy Software, Inc.’s
“parked-coming soon” webpage. Passively
holding a domain name requires a greater showing from the registrant that the
domain name was not registered in bad faith and is not being used in bad
faith. After all, what business purpose
is there for simply forwarding a domain name to another web site? This arrangement (without more) suggests
traffic is being funneled from the new domain name to the existing web site.
While there may
be bona fide business reasons for such an arrangement, Respondent has
failed to address this issue. This
leads the Panel to find Respondent’s actions constitute bad faith registration
and use pursuant to Policy ¶4(a)(iii). See
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of
Policy ¶4(a)(iii)).
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 <aigfraud.com>
domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: Monday, April 7, 2005
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