American International Group, Inc. v Mary
Ellen Morris
Claim Number: FA0509000569033
PARTIES
Complainant is American
International Group, Inc. (“Complainant”), represented by Caroline L. Stevens, Two Prudential Plaza, Suite 4900,
Chicago, IL 60601. Respondent is Mary Ellen Morris (“Respondent”),
represented by Brian D. Caplan, of Labaton Sucharow & Rudoff LLP, 100 Park Avenue, 12th
Floor, New York, NY 10017.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aigfraud.net>,
<aigcase.com> and <aiginsurancefraud.com>,
registered with Register.Com.
PANEL
The undersigned certifies that he has acted independently and
impartially and, to the best of his knowledge, has no known conflict in serving
as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 29, 2005; the National Arbitration Forum received a
hard copy of the Complaint on September 30, 2005.
On September 30, 2005, Register.Com confirmed by e-mail to the National
Arbitration Forum that the <aigfraud.net>,
<aigcase.com> and <aiginsurancefraud.com> domain
names are registered with Register.Com and that Respondent is the current
registrant of the name. Register.Com
has verified that Respondent is bound by the Register.Com 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 September 30, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 20, 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.net, postmaster@aigcase.com and
postmaster@aiginsurancefraud.com by e-mail.
On October 18, 2005, Respondent submitted a request for additional time to submit a Response pursuant to National Arbitration Supplemental Rule #6. An Extension of Time to Respond was issued, setting a new deadline of November 9, 2005 by which Respondent could file a Response to the Complaint.
A timely
Response was received and determined to be complete on November 9, 2005.
On November 14, 2005, Complainant submitted a timely Reply.
On November 22, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, American International Group, Inc., contends that the <aigfraud.net>, <aigcase.com>, and <aiginsurancefraud.com> domain names are confusingly similar to Complainant’s AIG trademark. Respondent’s domain names incorporate Complainant’s AIG mark in its entirety, along with the standard English word “fraud,” “case” or the phrase “insurance fraud.”
Respondent should not be considered as having rights or a legitimate interest in the domain names. 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. Respondent’s intended use of the <aigfraud.net>, <aigcase.com>, and <aiginsurancefraud.com> domain names to organize a class action lawsuit against Complainant capitalizes on the fame of the AIG mark for Respondent’s own economic benefit. Such a purpose does not give Respondent rights or a legitimate interest 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 achieve the aim of organizing a class action lawsuit, especially a domain name that is confusingly similar to Complainant’s trademark and services.
The domain names <aigfraud.net>, <aigcase.com>, and <aiginsurancefraud.com> were registered and are being used in bad faith by Respondent. Respondent admitted to being aware of Complainant’s rights in the AIG mark when Respondent registered the domain names. Registration of a domain name with actual knowledge of its use as a mark is evidence of bad faith.
B. Respondent
Respondent, Mary Ellen Morris, registered the domain names so that the
law firm of Labaton, Sucharow & Rudolph LLP (“Labaton”) can provide
information to the members of a class of plaintiffs whom Labaton is
representing in a class action lawsuit against Complainant and to members of
the public. The websites will not offer
the sale of any goods or services; will not solicit donations or other
payments; and will not contain any commercial advertising. Respondent contends that Labaton’s intended
use of the domain names are not for commercial gain. Respondent contends that the use of websites for such purposes in
large securities class actions is not uncommon.
Respondent contends that consumers will not be confused by any of the
three domain names. Customers of
insurance products would not be led to believe that such products could be
found at domain names that simply include AIG’s mark coupled with distinctive
words unrelated to the sale of insurance, such as “fraud,” “case,” and
“insurancefraud.”
Respondent has a legitimate interest in the domain names by providing a
means by which the Labaton law firm can communicate with and provide
information and resources to class members.
Furthermore, the Complaint implicates the right to free speech under the
First Amendment as the domain names are intended to be used to provide
information about a matter of public interest.
Respondent also contends that its intended use of the domain names is
protected by “Fair Use.” The three websites
are descriptive in that they are intended to describe the purpose and content
of the websites – to publicize a pending securities fraud litigation against
AIG.
C. Complainant’s Additional Submission
If
Respondent registered the domain names as part of a class action lawsuit that
Labaton is handling, then Labaton registered the domain names for its own
commercial gain. Labaton is a
commercial entity that makes money by successfully representing people in lawsuits. Labaton is using the domain names to assist
in its representation of the class members, by providing information about the
lawsuit, organizing class members, and possibly attracting additional class
members, thus increasing its chances of success, in which case, Labaton will be
financially rewarded. Registration of
the domain names for this purpose is evidence of bad faith.
Respondent attempts to justify her actions based on the existence of
domain names such as <enronfraud.com>, <tycofraudinfocenter.com>,
<worldcomlitigation.com>, and <globalcrossinglitigation.com>. The existence of these domain names and the
failure of Enron, Tyco, Worldcom, and Global Crossing to object to their
registrations does not establish that the registration of the domain names was
in accordance with ICANN rules.
The test for confusion is whether Internet users are likely to believe
that the domain names are thought to be affiliated with, connected to, or
sponsored by Complainant. Because
Complainant offers services related to both fraud and litigation, and because
the domain names feature Complainant’s trademark, confusion is likely.
Panels have already held that <aigfraud.com> and <aiglawsuit.com>
are confusingly similar to Complainant’s trademark. See American International
Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum April 7, 2005) (Speyer I); see also American International Group, Inc. v. Debra
Speyer, FA 481752 (June 28, 2005) (Speyer
II). In these two cases an attorney
registered the <aigfraud.com> and <aiglawsuit.com>
domain names for the purpose of providing information about bringing legal
claims against Complainant. In each
case the Panel held that the domain names were confusingly similar to
Complainant’s AIG trademark, that Respondent had no legitimate interest in the
domain names and that Respondent registered and used the domain names in bad
faith. In view of these holdings, <aigfraud.net>,
<aigcase.com> and <aiginsurancefraud.com> likewise
are confusingly similar, as the addition of “case” and “insurancefraud” are
insufficient to overcome a likelihood of confusion.
Respondent’s use of the domain names is likely to lead to initial
interest confusion.
On October 15, 2004, Labaton filed the class action against
Complainant. On April 18, 2005,
Respondent registered the domain names.
However, Respondent still has made no use of the domain names which is
passive holding of the domain names. See Speyer I (where domain name
<aigfraud.com> remained linked to registrar’s parked page more than three
months after registration of domain name, panel concluded that respondent had
failed to establish rights in the domain name).
The free speech defense is not pertinent because Complainant is not
attempting to keep Respondent or Labaton from expressing its opinions about
Complainant, and because Respondent intends to use the domain names for a
commercial purpose. Furthermore,
although the free speech defense entitles Respondent to express its opinions
about Complainant, it does not entitle Respondent to register domain names that
are confusingly similar to Complainant’s trademark.
FINDINGS
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 a 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. 1,151,229, 1,273,845; 1,851,675; and 2,320,184. Complainant owns approximately 600 trademark registrations incorporating the AIG mark worldwide. 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 mark AIG in connection with financial and insurance services, including insurance services related to fraud.
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.
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.
Respondent works for the Labaton law firm. The domain names were registered as part of the firm’s efforts in bringing a class action lawsuit against Complainant. The firm intended to link the domain names to websites that would be used to organize class members in the lawsuit and to provide them with information concerning the lawsuit.
The Complaint references Respondent’s
employer, the law firm of Goodkind Labaton Rudolf & Sucharow LLP; however,
the firm’s name changed to Labaton Sucharow & Rudolf LLP, effective October
1, 2005. Respondent, Mary Ellen Morris,
is Labaton’s Controller. Labaton is a
New York law firm specializing in securities fraud litigation.
In February 2005 and July 2005, Labaton was
appointed by two federal judges to serve as Co-Lead Counsel for the
court-appointed lead plaintiff representing a class of plaintiffs in a
securities fraud suit against AIG and other defendants. See In re American International Group, Inc. Securities Litigation,
Master File No. 04-8141, United States District Court, Southern District of New
York. The litigation has been widely
covered in the media.
On April 18, 2005, Respondent, acting in her
capacity as an agent of Labaron registered the <aigfraud.net>, <aigcase.com> and <aiginsurancefraud.com> domain names. None of the domain names have actually been
used.
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.
Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (“USPTO”) (Reg. No. 1,151,229, issued April 14, 1981). See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The domain names are confusingly similar to Complainant’s AIG mark because each domain name fully incorporates the mark with the addition of the generic or descriptive terms “fraud,” “case” and “insurance fraud.” The addition of these generic terms are insufficient to distinguish the domain names from Complainant’s 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 the complainant combined with a generic word or term); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The addition of a non-distinctive, descriptive, or generic term, such as these, does not change the overall impression of a mark. See, e.g., American International Group, Inc. v. Lobsang Marques a/k/a AIG Financial Guarantee Corp. 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 the term “financial” is regularly associated with Complainant).
Furthermore, in Speyer I the panel found that the <aigfraud.com> domain name was likely to cause confusion with Complainant’s AIG trademark. See American International Group, Inc. v. Debra Speyer, FA 422815 (Nat. Arb. Forum April 7, 2005) (Registrant registered the domain name for the purpose of providing information about bringing legal claims against Complainant. The panel held that the addition of the word “fraud” to the AIG mark was insufficient to overcome a likelihood of confusion). In Speyer II another panel found that the domain name <aiglawsuit.com> was confusingly similar to Complainant’s trademark. (Use of the term “lawsuit” with AIG in the <aiglawsuit.com> was insufficient to overcome a likelihood of confusion).
Moreover,
the addition of the generic top-level domains “.com” and “.net” in the domain
names are irrelevant in determining whether the domain names are 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 Kabushiki Kaisha
Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that
the domain name <toshiba.net> is identical to the complainant’s trademark
TOSHIBA).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent was not authorized or
licensed to register or use domain names incorporating Complainant’s AIG
mark. Respondent is not commonly known
by the domain names, therefore Respondent lacks rights and legitimate interests
in the domain names 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) the respondent is
not a licensee of the complainant; (2) the complainant’s prior rights in the
domain name precede the respondent’s registration; (3) the respondent is not
commonly known by the domain name in question); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no
rights or legitimate interests in domain names because it is not commonly known
by the complainant’s marks and the respondent has not used the domain names in
connection with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
Respondent argues that Labaton has rights or legitimate interests in the mark because Labaton intends to use the disputed domain names to provide information regarding the pending class action lawsuit against Complainant to class members involved in the litigation as well as to interested members of the public. Respondent says that the domain names will not lead to websites containing advertisements and that the use will be strictly noncommercial in nature.
Because these three websites would not be offering any products for
sale or otherwise be competing with Complainant, the concerns underlying such
“initial confusion” is absent. See Lamparello
v. Falwell, 420 F. 3d 309, 317 (4th Cir. 2005) (“When an alleged
infringer does not compete with the markholder for sales, some initial
confusion will not likely facilitate free riding on the goodwill of another
mark, or otherwise harm the user claiming infringement. Where confusion has little or no meaningful
effect in the marketplace, it is of little or no consequence in our analysis.”)
(citation and internal quotes omitted).
Respondent’s intended use of the websites is to inform class members and potential class members about the class action litigation. Respondent says that the sites will not be for a commercial use and that there will be no advertising on the website. Since there is no content on the sites, the Panel has only Respondent’s general statements of intended use to determine whether the use is commercial. Respondent states that there will be no commercial use. On the other hand, Complainant contends that commercial use can be inferred from the legal fees generated for Respondent if potential class members contact Respondent because of the site. A question exists whether the hosting of information about a publicly filed lawsuit on the websites which could result in the recruitment of possible plaintiffs for the class action lawsuit against Complainant is use for commercial gain. See American Express Company v. Amexsux, FA 356410 (Nat. Arb. Forum Dec. 17, 2004) (“First, legal action to recover financial restitution cannot fairly be said to constitute an attempt to procure ‘commercial gain’ within the meaning of the Policy. Secondly, hosting information about a publicly filed legal action is in the nature of fair use free speech permitted under Policy 4(c)(iii).”); see also Navigator Yachts, Inc. v. TD Curran, FA 226452 (Nat. Arb Forum Mar. 4, 2004)(use of domain name to gain information about a dispute with complainant is legitimate non-commercial or fair use pursuant to policy section 4(c) (iii)). Cf. Key Bank N.A. d/b/a Champion Mortgage Co., Inc. v. James Griffin, FA562478 (Nat. Arb. Forum Nov. 1, 2005) (Domain name linking Internet users to a website providing consumers with information and services regarding a lawsuit against Complainant found not to be a bona fide use. “However, the Panel is not aware that one suing another who holds a protected trademark acquires some right to use the targeted litigant’s protected mark in ways that benefit the user and not the holder of the trademark. The Panel finds that the cases recognizing bulletin board and informational use are distinguishable from the facts of this case.” ). Complainant supports its position by the two Speyer decisions. However, in the Speyer decisions, there was evidence of intended commercial use of the domain names <aigfraud.com> and <aiglawsuit.com> for solicitation of business for Respondent’s law firm.
The Panel concludes that it is unnecessary to determine whether Respondent’s intended use is informational or commercial. Respondent’s only use of the websites has been a passive use and Respondent has failed to show demonstrable preparations in development of Respondent’s intended use. Respondent says that the use of the disputed websites will not be commercial and that there will be no advertising; however, Respondent has revealed very little else about the proposed websites. As of the submission of the ICANN Complaint on September 29, 2005, Respondent had made no use of the website. Such lack of action has been held to indicate no rights or legitimate interests in a domain name. See, e.g., 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); Aircraft Owners & Pilots Association v. Albanian Oil Paintings & Antiques, FA 94183 (Nat. Arb. Forum March 30, 2000) (finding no legitimate business interest in the disputed domain due to Respondent not using the name). In Speyer I, the panel found no rights where respondent had passively held the domain name for three months.
Once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Although Respondent has stated an intended use for the website, Respondent has not produced sufficient evidence of demonstrable plans and preparation for its intended use of the website. Id. Respondent has stated in general terms the content of the website; however, Respondent has not presented evidence of the specific efforts of actual development of the website. Therefore, the Panel concludes that the only use Respondent has made of the website is a passive use which is not a legitimate or bona fide use.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Additionally, Respondent had actual
or constructive knowledge of Complainant’s mark because the mark is registered
throughout the world, including the USPTO’s principal registry. Furthermore, Respondent has admitted that it
was aware of Complainant’s rights in the AIG mark when Respondent registered
the disputed domain names. See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”); 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.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072).
Respondent’s passive holding of the domain names is also bad faith. See 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 ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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.net>,
<aigcase.com> and <aiginsurancefraud.com> domain
names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: December 6, 2005
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