American International Group, Inc. v.
Wayne Jenkins
Claim Number: FA0503000435748
PARTIES
Complainant
is American International Group, Inc. (“Complainant”),
represented by Caroline L. Stevens of
Two Prudential Plaza, Suite 4900, Chicago, IL, 60601. Respondent is Wayne Jenkins (“Respondent”), 1221 Wyndcliff Drive, West Palm
Beach, FL, 33414.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aigmortgagelife.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically March 7,
2005; the National Arbitration Forum received a hard copy of the Complaint March
8, 2005.
On
March 8, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aigmortgagelife.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc.
registration agreement and thereby has agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
March 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 31,
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@aigmortgagelife.com by e-mail.
A
timely Response was received and determined to be complete March 31, 2005.
A
timely Additional Submission was received from Complainant April 5, 2005, in
accordance with Supplemental Rule #7.
On April 8, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant alleges that:
1. The domain name that Respondent
registered, <aigmortgagelife.com>,
is identical or confusingly similar to Complainant’s protected mark.
2. Respondent has no rights to or legitimate
interests in the mark contained in its entirety in the disputed domain name.
3. Respondent registered and used the domain
name containing Complainant’s protected mark in bad faith.
B. Respondent urges that:
1. Respondent is “duly appointed with
AIG/American general” and notified his management before registering the domain
name site.
2. He has rights to and legitimate interests
that arise from bona fide use of the site.
3. He did not act in bad faith but, instead,
had the “express or implied” consent of Complainant.
C. Complainant’s Additional Submission
urges:
1. Respondent did not have Complainant’s
permission to register a domain name using Complainant’s protected mark.
2. Even if Complainant permits registration
of a domain name using Complainant’s protected mark, the domain name must be
registered in Complainant’s name and remains the property of Complainant.
3. Even if Respondent learned late that he
was using Complainant’s mark improperly and without permission, Respondent did
nothing to correct the wrong.
FINDINGS
Complainant
established by extrinsic proof in this proceeding that it has rights in the AIG
mark through registration with the United States Patent and Trademark Office
(Reg. No. 1,151,229 issued April 14, 1981; Reg. No. 176,034 issued October 6,
1981; Reg. No. 176,033 issued April 10, 1984).
Complainant has
been active in commerce under the AIG mark since 1968 and has used the American
General mark for financial and insurance services since 1926. Complainant spent considerable sums to
promote its mark and establish not only goodwill for the mark but secondary
meaning for it. Complainant advertised
by television sponsorship of numerous prime time, high audience shows.
Complainant’s
revenues in 2003 were some $81 billion.
When
Complainant discovered the disputed domain name, it contacted Respondent, who
represented that an employee of Complainant had given Respondent permission to
register the domain name. Complainant
alleged that the employee denied having done so. Complainant sent a cease and desist letter to Respondent February
16, 2005, but Respondent did not respond to the letter.
Not only has
Respondent sought to use the AIG mark, the domain name links to Complainant’s
other domain site.
Respondent
registered the disputed domain name June 2, 2003, some 77 years after
Complainant’s first use of its related marks in commerce.
Statements in
Respondent’s Response are contrary to the known facts bringing in doubt the
reliability of Respondent’s assertions.
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)
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 argues that it established rights in the
AIG mark by registering it with the United States Patent and Trademark Office
(Reg. No. 1,151,229 issued April 14, 1981; Reg. No. 176,034 issued October 6,
1981; Reg. No. 176,033 issued April 10, 1984).
Registration of the mark with a government authority is sufficient to
prove that Complainant has rights in the mark.
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
contends that the <aigmortgagelife.com>
domain name that Respondent
registered is confusingly similar to Complainant’s AIG mark, because the domain
name incorporates Complainant’s mark in its entirety, adding only the generic
or descriptive terms “mortgage” and “life.”
Adding generic or descriptive terms to a mark does not negate a finding
of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime
Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding
that the respondent’s domain names, which incorporated the 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 Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000)
(finding that because the domain name <quixtar-sign-up.com> incorporates
in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is
confusingly similar); see also Am.
Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding
that the addition of the generic word “Net” to the complainant’s ICQ mark,
makes the <neticq.com> domain name confusingly similar to the
complainant’s mark).
It
could be argued that the <aigmortgagelife.com>
domain name is not confusingly
similar to Complainant’s AIG mark because the domain name includes the words
“mortgage” and “life.” These terms may
be viewed as generic. Respondent argues
that Complainant does not offer products or services under its AIG mark that
are related to the term “mortgage” or “life.”
See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of
marks or lack thereof are context-specific concepts. In the Internet context,
consumers are aware that domain names for different Web sites are quite often
similar, because of the need for language economy, and that very small
differences matter."); see also Prudential Ins. Co. of Am. v.
QuickNet Communications, FA 146242 (Nat. Arb. Forum Mar. 27, 2003) (holding
that the
<prudentialmotors.com> domain name, which incorporated the PRUDENTIAL
mark with the addition of the word “motors,” had no apparent connection to the
complainant or the insurance and financial industry and was thus not
confusingly similar to the complainant’s mark).
However,
it is clear that Complainant has legal rights in the AIG mark and that
Respondent was aware of those rights before registering the domain name. Adding
descriptive terms to a mark that one knows belongs to another does not defeat a
claim of confusing similarity.
Complainant has established its rights to
and legitimate interests in the mark contained in its entirety in the domain
name that Respondent registered. Once
Complainant makes a prima facie showing for Policy ¶ 4(a)(ii), the
burden shifts to Respondent to establish rights or legitimate interests in the
disputed domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that where complainant asserts that respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name).
Respondent is not commonly known by the <aigmortgagelife.com> domain name.
In fact, Respondent admits that it is “not commonly known by any
derivation of the trademark AIG.”
Furthermore, Complainant asserts that it did not authorize Respondent to
register the disputed domain name and that Respondent is not licensed to use
any of Complainant’s AIG marks.
Complainant contends that even if Respondent were an affiliate of
Complainant, as claimed in the Response, Complainant requires its affiliates to
register domain names in Complainant’s name.
In light of these circumstances, Respondent has not established rights
and legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where: (1) respondent is not a licensee of
Complainant; (2) complainant’s rights in the mark precede the respondent’s
registration; and (3) respondent is not commonly known by the domain name in
question); see also Nokia Corp. v.
Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that the respondent is not
commonly known by the mark contained in the domain name where the complainant
has not permitted the respondent to use the NOKIA mark and no other facts or
elements can justify prior rights or a legitimate connection to the names
“Nokia” and/or “wwwNokia”).
Complainant claims that the <aigmortgagelife.com> domain name links to a website that displays
links to various websites offering services such as insurance, financial, real
estate and mortgage services, which are identical to products and services that
Complainant argues that it offers.
Respondent is using a domain name that includes Complainant’s AIG mark
to divert Internet users seeking Complainant’s products and services to
Respondent’s own website, which features links to products and services similar
to those offered by Complainant.
Furthermore, such use is not in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v.
Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
respondent’s diversionary use of complainant’s mark to attract Internet users
to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the disputed domain names); see also
Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored by Respondent hardly
seems legitimate”); see also TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s
diversionary use of Complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to competitors of
Complainant, was not a bona fide offering of goods or services).
Respondent asserts that it is a
registered agent of Complainant and has, therefore, been duly appointed and
authorized by Complainant to use Complainant’s AIG mark and Complainant’s other
marks and logos. However, Complainant
alleges that this not so and Respondent did not present proof to the
contrary. Respondent cannot be said to
be using the disputed domain name in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) when Respondent uses
Complainant’s mark in a domain name that competes with Complainant. But see Educ. Directories Unltd. v. Reflex
Publ’n, Inc., FA 142378 (Nat. Arb. Forum Mar. 26, 2003) (finding that
Respondent was making a bona fide use of the domain name as Complainant itself
had a business relationship with Respondent, where Respondent was part of its
affiliate program and Complainant sought jointly to exploit the domain name by
paying for click-through traffic to Complainant’s site generated by
Respondent); see also Verkaik v. Crownonlinemedia.com, D2001-1502
(WIPO Mar. 19, 2002) (finding that Respondent’s use of the disputed domain name
to make a bona fide offering of services bestowed rights and legitimate
interests in the domain name).
Respondent
also claims that the use of the <aigmortgagelife.com> domain name is
noncommercial and that no sales or marketing of any kind has occurred related
to the disputed domain name. Respondent
asserts that the arguments made by Complainant regarding the content of the
website refer to a parking page placed there by the Registrar without
Respondent’s permission. Respondent
further argues that it has since demanded that the registrar remove that
page. However, these arguments do not
excuse the fact that Respondent is using Complainant’s mark to compete with
Complainant. And, a domain name that
sets out to make money is for commercial purposes whether or not it actually
succeeds in making money. But
see Lockheed Martin Corp. v. Etheridge,
D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has rights in the
<missionsuccess.net> domain name where she was using the domain name in
connection with a noncommercial purpose); see also Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum
May 17, 2001) (finding that Respondent has rights and legitimate interests in
the domain name where Respondent made a non-commercial use of BAJABOATS.COM and
received no funds from users of the site connected to the domain name).
Complainant
satisfied the requirements of Policy ¶ 4(a)(ii), showing that Respondent has
“no rights to or legitimate interests” in a domain name containing
Complainant’s protected mark.
Complainant
argues that Respondent registered and is using the <aigmortgagelife.com> domain
name in bad faith. Respondent uses the
domain name to divert Internet users to a website that displays links to
Complainant’s products and services and to products and services of
Complainant’s competitors. Whether or
not Respondent’s enterprise makes money, Respondent set out to derive
commercial benefit from these diversions; Respondent is attempting to divert
Internet users for commercial gain by attracting Internet users to Respondent’s
website through a likelihood of confusion with Complainant’s AIG mark. This is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where Respondent attracted users to a website sponsored by Respondent and
created confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of that website).
While
the situations listed under Policy ¶ 4(b) are circumstances in which there may
be a finding of bad faith registration and use, it is widely understood under
the Policy that this list is not intended to be exhaustive. Therefore, the Panel may decide to examine
additional factors in making its determination of bad faith registration and
use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Complainant
also contends that Respondent admitted to having actual knowledge of
Complainant and Complainant’s marks, because Respondent claims to have been a
registered agent of Complainant.
Furthermore, Complainant asserts that Respondent also had constructive
knowledge of Complainant’s AIG mark when Respondent registered the <aigmortgagelife.com> domain name, because the mark had become
well-known and associated with Complainant’s financial products and
services. Additonally, Complainant’s
registration of the AIG mark with the USPTO put Respondent on constructive notice
of Complainant’s rights in the mark.
Respondent admits actual knowledge and the law imposes constructive
knowledge on Respondent of Complainant’s rights in the mark. This is evidence of bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse."); see also
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also 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
asserts that the website referred to by Complainant as being posted at the <aigmortgagelife.com> domain name was placed there without
Respondent’s permission by the registrar.
Respondent has not offered any extrinsic proof to show rights or an
attempt to protect Complainant’s rights.
Even if Respondent’s contention is correct and Respondent has made no
use of the disputed domain name, Complainant may prevail where potential use by
Respondent would infringe upon Complainant’s rights in the AIG mark. This also supports findings of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See 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 Phat Fashions
v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name
because “[i]t 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”); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad
faith registration and use where it is “inconceivable that the respondent could
make any active use of the disputed domain names without creating a false
impression of association with the Complainant”).
Complainant satisfied the requirements of ICANN Policy ¶ 4(a)( iii) to
show “bad faith registration and use.”
Having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <aigmortgagelife.com> domain name be
TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panel
Dated:
April 22, 2005
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