American International Group, Inc. v. Bruce
Levin
Claim Number: FA0511000591254
PARTIES
Complainant is American
International Group, Inc. (“Complainant”), represented by Caroline L. Stevens, Two Prudential Plaza, Suite 4900,
Chicago, IL 60601. Respondent is Bruce Levin (“Respondent”), represented
by Debra G. Speyer,
Two Bala Plaza, Suite 300, Bala Cynwyd, PA 19004.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aigcomplaints.com>, <aiglawsuits.com>, <aigcomplaint.com>, <aigclassaction.com>, <aigclassactionlawsuit.com>, <aiginvestigation.com>, <aigfrauds.com> and <aiglitigation.com>, registered with Go Daddy Software, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 2, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 3, 2005.
On November 3, 2005, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <aigcomplaints.com>, <aiglawsuits.com>, <aigcomplaint.com>, <aigclassaction.com>, <aigclassactionlawsuit.com>, <aiginvestigation.com>, <aigfrauds.com> and <aiglitigation.com> domain names are registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the names. 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 November 4, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 28, 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@aigcomplaints.com,
postmaster@aiglawsuits.com, postmaster@aigcomplaint.com,
postmaster@aigclassaction.com, postmaster@aigclassactionlawsuit.com,
postmaster@aiginvestigation.com, postmaster@aigfrauds.com and
postmaster@aiglitigation.com by e-mail.
A timely Response was received and determined to be complete on November
28, 2005.
Complainant’s Additional Submission was timely filed and will be
considered.
Respondent’s Response to AIG’s Reply is deficient on procedural grounds
and will not be considered.
On December 7, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, through its member companies, uses the AIG trademark in
connection with its various financial and insurance services. Complainant offers, through several of its
member companies, insurance services related specifically to fraud and to lawsuits,
legal liability, litigation, and other law-related matters. In addition, Complainant and its member
companies use the “AIG” name as a brand 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. 1,151,229;
1,273845; 1,851,675; 2,320,184; and other trademark registrations Complainant
owns worldwide for the AIG mark.
Complainant also used the AIG mark in connection with its website at
<aig.com>, among others. Since at
least 1968, Complainant, through its member companies, has used the AIG mark in
connection with a variety of financial and insurance services. Since at least as early as 1968, Complainant
has used the AIG mark in connection with insurance services related to
fraud. Complainant also uses the AIG
mark in connection with insurance services related to litigation. Since 1998,
Complainant has used the AIG mark in connection with litigation services. Since 1997, Complainant has been engaged in
the field of insurance consultation in the field of lawsuit insurance
management.
Annually, AIG spends millions of dollars in advertising and promoting
its member companies’ goods and services under the AIG mark. As a result of Complainant’s advertising and
promotional efforts and its dedication to providing quality services, AIG’s
revenues in 2004 were over $97 billion.
In or around July 2005, Complainant became aware that Respondent had
registered the <aigcomplaints.com>, <aiglawsuits.com>,
<aigcomplaint.com>, <aigclassactioncom>, <aigclassactionlawsuitlcom>,
<aiginvestigation.com>, <aigfrauds.com> and <aiglitigation.com>
domain names, which prominently feature Complainant’s AIG mark. All of the domain names have been linked to
the <aiglawsuits.com> website.
At the bottom of the website is a link to the
<wallstreetfraud.com> website.
The website features biographies of the attorneys affiliated with the
law firm, including a profile for Ms. Debra Speyer.
On July 25, 2005, Complainant sent a letter to Ms. Speyer and a similar
letter to Mr. Levin on July 28, 2005, via e-mail with a confirmation copy sent
via Federal Express, advising them of Complainant’s rights in its AIG mark and
requesting transfer of the domain names.
Neither Ms. Speyer nor Mr. Levin responded to the letters. On August 28, 2005, Complainant sent
follow-up letters in the same manner advising Speyer and Levin that Complainant
would file a Complaint with the Internet Fraud Complaint Center.
On October 25, 2005, counsel for Bruce Levin sent a letter to the IFCC,
copying Complainant’s counsel. In the
letter it was explained that Respondent had registered the domain names on
behalf of Ms. Debra Speyer for the business purpose of providing information
for actual and potential clients of Ms. Speyer’s law practice.
The domain names are confusingly similar to Complainant’s AIG mark.
Respondent has no rights to or legitimate interests in the domain
names. Respondent has not been known by
the domain names nor received permission or consent to use the trademark. Complainant began using the trademark long
before Respondent registered the domain names.
Respondent is using the domain names to solicit business by capitalizing
on the fame of Complainant’s trademark.
The domain names were registered and being used in bad faith by Respondent. Ms. Speyer was aware of Complainant’s rights
in the AIG mark and intended to communicate with people familiar with
Complainant’s trademark for commercial gain.
B. Respondent
All of the domain names registered by Dr. Bruce H. Levin on behalf of
attorney Debra G. Speyer were for legitimate business purposes—to provide
information for actual and potential clients of Ms. Speyer’s law practice,
which specializes in securities fraud, insurance fraud and class actions
against publicly traded corporations, such as AIG. The use of “AIG” as part of the domain names is thus purely a
descriptive, fair use, as the domain names must necessarily refer to AIG given
the content of the websites. All of the
domain names add a descriptive, common English word to further specify their
purpose.
Ms. Speyer’s websites are a protected form of free speech and should
not be prohibited.
Further, the
operational websites associated with the domain names provide a prominent
disclaimer in bold at the top of each website stating the following: “This site is not affiliated in any way with
the American International Group (AIG) or with any of its subsidiaries. This website is designed for informational
purposes for those who in good faith believe they might have incurred damages as
a result of the actions of AIG.” This
disclaimer certainly makes it clear to an Internet user that the websites have
no affiliation or business relationship with AIG.
The domain names are not identical or confusingly similar to a
trademark or service mark in which Complainant has rights.
Ms. Speyer is permitted to operate her websites because it is a form of
protected free speech. Ms. Speyer is
permitted to make fair use of a trademark by operating websites that take the
position that AIG has misled and defrauded the public. While AIG would prefer that people not know
about their legal rights and remedies arising out of AIG’s allegedly fraudulent
activities, it cannot use the ICANN proceeding as a means to prohibit people
from seeking legal redress against AIG.
Because the content of <aigclassaction.com> and <aigclassactionlawsuit.com>
constitutes a fair use, and fair use is a defense to claims of trademark
infringement, Ms. Speyer is clearly not using any of the names in bad faith.
Complainant has not proven any of the elements set out in Policy,
Paragraph 4(a).
The other domain names should also remain with Dr. Levin, for similar
(but not exactly the same) reasons. For
example, <aigcomplaint.com> and <aigcomplaints.com>
immediately convey the impression that the websites affiliated with these
domain names concern complaints made by consumers against AIG. No one is likely to be confused by these
domain names. With respect to <aiglitigation.com>,
<aigfraud.com> <aiglawsuits.com> and <aiginvestigation.com>,
it would be very unlikely that AIG would want to have the words “litigation,”
“fraud,” “lawsuits” or “investigation” in domain names or websites AIG owned or
operated. AIG has no such domain names,
nor has AIG alleged that it owns any such domain names
C. Additional Submissions
Complainant’s Additional Submission
Ms. Speyer admits that she was aware of Complainant prior to
registering the domain names, and the domain names were registered for her
commercial gain.
NAF has already ruled on similar cases involving Ms. Speyer and
Complainant and these cases weigh in Complainant’s favor. Adding a merely descriptive term, such as
“complaint’ and “investigations” does not overcome a likelihood of confusion.
The fair use defense does not excuse use of another party’s trademark
where confusion is likely to result, as is the case here. With regard to free speech, Complainant is
not attempting to keep Ms. Speyer from expressing her opinion and is not using
an ICAAN proceeding in an attempt to keep people from seeking legal redress, as
asserted by Ms. Speyer. Although Ms.
Speyer cannot be prevented from using websites linked to domain names to voice
her opinions about Complainant, she is not entitled to use domain names that
are confusingly similar to Complainant’s trademark.
FINDINGS
1.
Complainant is
a large, diversified, corporation which, either itself or through associated
companies, does business in a number of fields including insurance and
financial services. Such diversified
services include underwriting, offering of services relating to fraud
associated with insurance and credit card services, litigation services and
management of litigation services related to legal liability, management of
liability underwriting related to lawsuits, and management of litigation
related to insurance claims.
2.
Complainant
owns numerous registrations both in this country and in other countries for the
AIG trademark, which predate Respondent’s registrations of the disputed domain
names at issue in this case.
3.
Respondent is
an individual who states that he registered the disputed domain names as agent
and for the benefit of Debra G. Speyer.
4.
Debra G. Speyer
is an attorney at law who specializes in securities fraud, insurance fraud and
class actions against publicly traded corporations, such as Complainant.
5.
Debra G. Speyer
operates the websites associated with the disputed domain names for her own
benefit and for financial gain
6.
The domain
names at issue in this case are confusingly similar to Complainant’s trademark
7.
Respondent has
no rights to or legitimate interests in the domain names at issue.
8.
The domain
names at issue were registered and are being used in bad faith.
9.
The domain
names at issue should be transferred to Complainant.
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 owns registrations for the AIG
mark with the United States Patent and Trademark Office and in other
countries. That is a sufficient showing
to permit Complainant to proceed under Policy
¶ (4)(a)(i). See Mens’s
Warehouse, 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).
All of the domain names at issue incorporate
fully Complainant’s mark, AIG, and add descriptive terms such as “complaints,”
“lawsuits,” “complaint,” “classaction,”
“classactionlawsuit,” “investigation,” “frauds” and “litigation.”
Other Panels have found
<aiglawsuit.com> and <aigfraud.com> are confusingly similar to
Complainant’s AIG mark. See Am.
Int’l Group, Inc. v. Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005)
(“Numerous ICAAN decisions have held that the addition of a non-distinctive,
descriptive, or generic term, such as ‘lawsuit,’ does not change the overall
impression of a mark.”). See Am.
Int’l Group, Inc. v. Speyer, FA 422815 (Nat. Arb. Forum Apr. 7,
2005) (“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 … The addition of a descriptive term such as ‘fraud’ … does not changes
the overall impression of the mark.”).
At issue in this case are <aiglawsuits.com>
and <aigfrauds.com>.
The addition of the letter “s” to these Domain Names do not distinguish
them from the Domain Names already decided to be confusingly similar in the
cases cited above. Based upon the
reasoning in the two cited Forum cases, <aiglawsuits.com> and <aigfrauds.com>
are found to be confusingly similar to Complainant’s AIG mark.
The <aiglitigation.com> domain
name is confusingly similar as the undisputed allegation of Complainant that it
engages in litigation related services creates a situation where the addition
of a generic term to Complainant’s mark that has an obvious relationship to
Complainant’s business, is impermissible. See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 23, 2000).
The same result must be reached as to <aiginvestigation>. The undisputed allegation by Complainant is
that part of its business is to investigate credit card fraud. Adding a generic term that has an obvious
relationship to Complainant creates confusing similarity.
The <aigcomplaint> and <aigcomplaints>
Domain Names are found to be confusingly similar to the AIG mark on the grounds
that simply adding a generic word or term to an identical mark of Complainant
constitutes confusingly similarity. See Arthur Guiness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) and Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000).
Respondent makes little effort to contest the
confusing similarity of the Domain Names addressed above, other than simply to
state that Respondent does not consider them confusingly similar. Respondent makes an effort to contest the
confusing similarity of <aigclassaction.com> and <aigclassactionlawsuit.com>.
Respondent contends that the
term “class action” is not regularly or ever associated with Complainant. “No
reasonable person would be confused by the websites…A significant term in the
domain names…does not describe any aspect of Complainant’s business, and as
such, there will be no confusion as to the websites,” Respondent states.
Complainant’s undisputed allegations
establish that AIG conducts business related to “management liability insurance
underwriting related to lawsuits”… to “manage litigation related to insurance
claims” and to sell “coverage to publicly held companies in the event they
incur costs as a result of lawsuits.”
This Panel can find no adequate reason to find that Complainant could
not be involved in some manner in class action lawsuits. The Panel also finds that Respondent chose
these two Domain Names precisely to have them associated with Complainant. These facts support the finding that <aigclassaction.com>
and <aigclassactionlawsuit.com> are confusingly similar to
Complainant’s AIG mark because the Domain Names incorporate Complainant’s mark
with additions of generic words which could be considered to have a
relationship with Complainant’s business as well as the simple combination of a
descriptive word with the mark. See
Space Imaging LLC v. Brownell, supra, and Kabushiki Kaisha v.
Inja, Kil, supra. The addition of
the generic top level domain “.com” in the domain names is irrelevant in determining
whether the domain name is confusingly similar to Complainant’s mark. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).
All of the Domain Names at issue are
confusingly similar to Complainant’s mark.
Complainant prevails under Policy ¶
(4)(a)(i).
Complainant shows that Respondent is neither
commonly known by the disputed domain names nor authorized to use Complainant’s
AIG Mark. This established a prima
facie case, which requires Respondent to come forward with concrete evidence to
establish Respondent’s rights to or legitimate interests in the disputed domain
names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000). (Concrete evidence constitutes more than mere personal
assertions. Just as a Panel should
require a complainant to establish by means other than mere bald assertions
that it is the owner of registered marks, so should the panel require that a
respondent come forward with concrete evidence that the assertions made in the
response are true).
Respondent’s sole position is as follows:
“With regard to element two, these Domain Names were registered by Dr. Bruce H.
Levin on behalf of attorney Debra G. Speyer for legitimate business purposes-
to provide information for actual and potential clients of Ms. Speyer’s law
practice, which specializes in securities fraud, insurance fraud and class
actions against publicly traded corporations, such as AIG. The use of AIG as part of the Domain Names
is thus purely a descriptive, fair use, as the Domain Names must necessarily
refer to AIG given the content of the websites. Also, Ms. Speyer is permitted to operate her websites because it
is a form of protected free speech. Ms.
Speyer certainly is permitted to make fair use of a trademark by operating
websites that take the position that AIG has misled and defrauded the public.”
The Policy states that if a respondent is
making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue, then respondent can prevail under the
Policy. See Policy ¶ (4)(c)(iii).
Fair use, under the Policy, contemplates a
use without intent for commercial gain.
Respondent acknowledges the use of the domain names is for commercial
gain. Thus fair use is not established.
See Am. Int’l Group, Inc. v. Speyer, FA 481752 (Nat. Arb. Forum
June 28, 2005) (“Complainant asserts that Respondent is using the
<aiglawsuit> domain name to redirect Internet users to its commercial
website unrelated to Complainant’s business for Respondent’s commercial
gain. In the Panelist’s opinion such
use does not constitute legitimate noncommercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert consumers, in
accordance with the Policy ¶ 4(c)(iii).”)
The first difference in the facts of the case just cited and this case
is that in the case just cited all domain names resolved to <aiglawsuit.com>
and in this case all domain names resolve to <aiglawsuits.com>. One other difference is apparent. That is, the disputed domain names in this
case are registered to Bruce Levin rather than to Debra Speyer. However, applying general principles of law,
Bruce Levin is found to be the agent of Debra Speyer in the registration of the
domain names, who registered them within the scope of the agency. The acts of Bruce Levin are the acts of
Debra Speyer, under principles of agency.
This Panel agrees with the reasoning of the Panel in Am. Int’l Group,
Inc. v. Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005). Respondent has not illustrated any rights to
or legitimate interests in the disputed domain names, nor does any such
interests appear in the pleadings or exhibits.
Complainant prevails under Policy ¶ 4(a)(ii).
Respondent admits to having knowledge of
Complainant and its AIG mark prior to registration of the disputed domain names
and, in fact, chose the disputed domain names for the specific purpose of attracting
Internet users with an interest in AIG to Respondent’s website at <aiglawsuits.com>. That set of facts illustrates evidence of
bad faith registration and use. See Prudential Ins. Co. of Am. v. Stonybrook
Invs. LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) and Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000). See
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4,
2002).
Complainant contends that Respondent
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iv) as Respondent is using the confusingly similar domain names to
capitalize on the fame associated with Complainant’s mark to promote a certain
law firm, for commercial gain. That
appears to be the factual situation found here. The facts constitute evidence of bad faith registration and use. See
G. D. Searle & Co. v. Clebrex Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21, 2002) (finding that the respondent registered and used the
domain name in bad faith pursuant to the Policy because the respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website). See also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000)
(finding bad faith where the domain name in question is obviously connected
with the complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain).
Under very similar facts, the principal in
this case, Debra Speyer, was found by other panels to have registered and used
<aiglawsuit.com> and <aigfraud.com> in bad faith. See Am. Int’l Group, Inc. v. Speyer,
FA 422815 (Nat. Arb. Forum Apr. 7, 2005) and Am. Int’l Group, Inc. v.
Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005) (“As was found in Am.
Int’l Group v. Speyer, FA422815 (Nat. Arb. Forum Apr. 7, 2005) it is
the Panelist’s opinion that the Respondent in the present case has been using
the domain name at issue to capitalize on Complainant’s mark to attract
Internet users to Respondent’s website for commercial gain by creating a
likelihood of confusion with Complainant’s mark is evidence of bad faith
registration and use pursuant to Policy 4(b)(iv). See e.g. MathForum.com,
LLC v. Weiguant Huang, D2000-0743 (WIPO Aug. 17, 2000); see also
eBay, Inc. v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 15,
2001)…Thus, the Panelist finds that the domain name at issue has been
registered and used in bad faith.”).
This Panel agrees with the reasoning of Am.
Int’l Group, Inc. v. Speyer, FA 481752 (Nat. Arb. Forum June 28,
2005). All of the disputed domain names
at issue in this case were registered and used to capitalize on Complainant’s
mark to attract Internet users to Respondent’s website for commercial gain by creating
a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of the website as prohibited by Policy
¶ (4)(b)(iv).
Respondent’s use of a disclaimer on its
website is not enough to overcome a finding of bad faith registration and use
pursuant to the Policy. See Thomas & Betts Int’l, Inc. v. Power Cabling
Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based
upon initial interest confusion despite disclaimer and link to complainant’s
website on the respondent’s website). See also Ciccone v. Parisi, D2000-0847
(WIPO Oct 12, 2000) (“Respondent’s use of a disclaimer on its website is
insufficient to avoid a finding of bad faith.
First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel
initial interest confusion that is inevitable from Respondent’s actions.”).
Complainant prevails under 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 <aigcomplaints.com>,
<aiglawsuits.com>, <aigcomplaint.com>, <aigclassaction.com>,
<aigclassactionlawsuit.com>, <aiginvestigation.com>, <aigfrauds.com>
and <aiglitigation.com> domain names be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 21, 2005
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