American International
Group, Inc. v. Reggie Benjamin
Claim Number: FA0703000944242
PARTIES
Complainant is American International Group, Inc. (“Complainant”), represented by Jeffrey
S. David, Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent
is Reggie
Benjamin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aigproperties.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelist in this proceeding.
Honorable Tyrus R. Atkinson, Jr., Jeffrey M. Samuels and Flip Petillion
as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 21, 2007.
On March 21, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <aigproperties.com> domain name is
registered with Go Daddy Software, Inc.
and that the 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 March 27, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 16, 2007 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@aigproperties.com by e-mail.
A timely Response was received and determined to be complete on April 11, 2007.
A timely Reply to Respondent's Response was received on April 16, 2007.
An Additional Submission from Respondent was received on April 17, 2007, and was considered to be timely and complete pursuant to Supplemental Rule 7.
On April 20, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Tyrus R. Atkinson, Jr., Jeffrey M.
Samuels and Flip Petillion as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant’s contentions can be summarized as follows:
Respondent created this domain name in 2004.
In or around September 2004, Complainant became aware of the registration of the <aigproperties.com> domain name by Respondent.
The registration of the <aigproperties.com> domain name concerned Complainant because the domain name prominently features Complainant’s “AIG” mark.
Complainant, through its attorneys, sent a cease and desist letter to Respondent’s proxy registrar, Domains by Proxy, notifying it of Complainant’s rights to the “AIG” mark. Respondent’s proxy registrar then notified Respondent of Complainant’s letter.
In or around November 2004, Respondent offered to sell the <aigproperties.com> domain name to Complainant. On November 22, 2004, Complainant wrote to Respondent, declining this offer and explaining to Respondent that, because the <aigproperties.com> website merely stated “Coming Soon” and contained no further information, Complainant would reserve its right to take further action should a likelihood of confusion arise or should the website content change.
In or around July 2006, Complainant became aware that Respondent had begun to use the <aigproperties.com> domain name to advertise for its services. Respondent’s website prominently displays Complainant’s “AIG” mark, while offering real estate services identical or related to Complainant’s. On July 25, Complainant, through its attorneys, sent a formal cease and desist letter via email and Federal Express to Respondent, informing Respondent that it was infringing Complainant’s trademark rights in the “AIG” family of marks. Complainant informed Respondent that its use of <aigproperties.com> in connection with real estate was likely to cause consumer confusion. Respondent refused to cease infringement or to cooperate with Complainant.
On September 20, 2006, Complainant sent a follow-up letter to Respondent, again requesting that Complainant cease and desist use of the <aigproperties.com> domain name.
Complainant again informed Respondent that it was infringing upon Complainant’s valuable rights to the “AIG” family of marks. Respondent again refused to cease infringement or to cooperate with Complainant.
Complainant continued to attempt to resolve the matter amicably. On November 20, 2006, Complainant, through its attorneys, sent a letter to Respondent, again informing Respondent that it was infringing Complainant’s rights to the “AIG” mark, and requesting that Respondent cease use of the <aigproperties.com> domain name.
Complainant,
through its attorneys, again sent Respondent a reminder letter on November 30,
2006, repeating Complainant’s concerns. Respondent still refused to
relinquish the domain name and to cease infringement of Complainant’s valuable
“AIG” marks. Accordingly, this Complaint followed.
According to Complainant, the <aigproperties.com> domain name is confusingly similar to Complainant’s “AIG” mark for real estate services. The case is analogous to a number of other cases that held that the combination of the “AIG” trademark with a non-distinctive, generic, or descriptive term does not change the overall impression of the “AIG” 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 Complainant’s “AIG” mark is well-known throughout the world and the term “financial” is regularly associated with Complainant). See, e.g., American International Group, Inc. v. Kim Chung, FA 161315 (Nat. Arb. Forum July 14, 2003) (transferring aigprivatebankonline.com); American International Group, Inc. v. Free Space Image Consultants Inc. a/k/a Mark Stever, FA 411737 (Nat. Arb. Forum Mar. 22, 2005) (transferring aigpartners.com); and American International Group, Inc. v. Domain Admin, FA 629198 (Nat. Arb. Forum Mar. 1, 2006) (transferring aigcarinsurance.com). As in these cases, Respondent’s addition of the descriptive word “properties” does not distinguish it from the “AIG” trademark. Complainant’s “AIG” mark is well known throughout the world and is regularly associated with real estate, financial, and investment services. Accordingly, the domain name is confusingly similar to Complainant’s “AIG” mark.
To add to the confusion, the domain name is linked to a website that is confusingly similar to Complainant’s trademark, because it features services which are identical or related to Complainant’s real estate services. The <aigproperties.com> domain name is therefore likely to cause confusion with Complainant’s “AIG” mark.
Still according to Complainant, Respondent does not have rights or a legitimate interest in the <aigproperties.com> domain name for a number of reasons:
- Respondent is not a licensee of Complainant;
- Complainant’s rights in the disputed domain name precede Respondent’s registration, and Respondent is not commonly known by the domain name in question. See, e.g., Academy of Motion Picture Arts and Sciences v. S. Najeeb A. Khan (Nat. Arb. Forum Nov. 14, 2001), citing Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000);
-
Respondent did not obtain authorization from
Complainant to use the “AIG” mark or anything confusingly similar prior to
registration and use of the <aigproperties.com>
domain name. In fact, Respondent continued to use the disputed domain name
despite being notified that it could not use
the disputed domain name. Failure to obtain authorization from a trademark
holder prior to the use or registration of a domain name incorporating that
trademark is evidence that a respondent has no legitimate interest in that
domain name.
- Respondent only recently began use of the <aigproperties.com> domain name. Respondent first registered this domain name in 2004. Complainant has been using its “AIG” mark since at least 1968. As such, Complainant’s rights in domain names incorporating the “AIG” mark precede Respondent’s registration by many years.
- Respondent is not commonly known by the domain name in question. In Tercent Inc. v. Lee Yi, the Panel found that lack of a legitimate interest can be found when “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name.” FA 139720 (Nat. Arb. Forum Feb. 10, 2003); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ltd Commodities, LLC v. AnnaValdieri, FA 84293 (Nat. Arb. Forum Jan. 2, 2007) (finding no legitimate interest where the respondent was not commonly known by the disputed domain name). Here, Respondent is not known by the <aigproperties.com> domain name. Rather, the WHOIS information for the disputed domain name shows that Respondent is known as “Reggie Benjamin.” Nothing in the WHOIS information suggests that Respondent has any connection with “AIG” or <aigproperties.com>. This is further evidence that Respondent has no legitimate interest in the domain name.
-
Complainant’s use of the “AIG” mark is known and
associated with high-quality services throughout the financial, insurance, and
real estate industries, and by the consuming public. Thus, Respondent had
constructive knowledge, and likely actual knowledge, of Complainant’s use of
the “AIG” mark. Registration of a domain name with constructive knowledge of
its use as a mark suggests no rights or legitimate interests in the domain name
and can serve as evidence of bad faith. The Prudential Insurance Company of
Still according to Complainant, Respondent registered and is
using the <aigproperties.com>
domain name in bad faith. Respondent at least had constructive knowledge of
Complainant’s rights in the “AIG” mark, yet Respondent registered the <aigproperties.com> domain name. Registration
of a domain name with actual or constructive knowledge of its use as a mark can
serve as evidence of bad faith. The Prudential Insurance
Company of
As further evidence of Respondent’s bad faith, Complainant argues that Respondent attempted to sell the disputed domain name to Complainant in or around November 2004 and that an attempt to sell a disputed domain name is evidence of bad faith. See, e.g., Metropolitan Life Insurance Co. v. Park Minwoo, FA 863197 (Nat. Arb. Forum Jan. 27, 2007); see Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use).
Moreover, Complainant finds that its real estate services and
the services offered through the <aigproperties.com>
domain name are similar, if not identical. Complainant therefore believes
that Respondent relied on the confusing similarity between the <aigproperties.com> domain name
and Complainant’s “AIG” mark to confuse Internet users into believing that the <aigproperties.com> domain name
is affiliated with, sponsored by, or otherwise related to Complainant. Reliance
on the goodwill of Complainant’s trademark to redirect Internet users to a
website unrelated to Complainant shows bad faith. See, e.g., Yahoo! Inc.,
GeoCites, HotJobs.com, Ltd., and Launch Media, Inc., v. Henry Chan, FA 162050 (Nat. Arb. Forum
B. Respondent
Respondent argues that Complainant wants the Panel to believe that it owns any .com, .net, or .TV etc that begins with the letters of the English alphabet “AIG”.
Respondent argues that there are no factual or legal grounds for Complainant to claim ownership.
Respondent also argues that the idea that the <aigproperties.com> domain name is misleading is simply a statement that has no basis. Respondent says that it has never received an e-mail, telephone, or any form of inquiry that should be directed to American International Group, Inc.
Respondent also argues that it was Complainant who offered to pay $2,000.00, which he refused and that he never offered to sell the domain name.
C. Additional Submissions
Complainant has stressed that it has
valid, subsisting rights in its well-known “AIG” family of trademarks, that it owns
many incontestable registered marks on the Principal Register for “AIG” and the
“AIG” family of marks, and that its member companies provide advice to first
time home buyers—in connection with working with real estate professionals,
selecting homes, managing finances, and the like—provide home equity loans, and
provide other real estate-related services.
According to Complainant, the “AIG” mark is well known for real estate-related services, among others.
Respondent argues that confusion is unlikely because the <aigproperties.com> domain name is not identical or confusingly similar to Complainant’s trademarks. Complainant disagrees and argues that confusion is likely to occur because the disputed domain name and the website linked thereto feature Complainant’s “AIG” trademark and the goods and services of AIG member companies.
According to
Complainant, Respondent's website at <aigproperties.com>
lists residential and investment properties, property management and leasing in
Complainant argues that Respondent’s claim that there have been no instances of actual confusion is not probative of whether the <aigproperties.com> domain name is likely to cause confusion. Only because the <aigproperties.com> domain name contains Complainant’s entire “AIG” trademark, it is likely to cause confusion.
Still, according to Complainant, Respondent does not have a legitimate interest in the domain name or “AIG.” It has provided no evidence that it is known by AIG, it has not submitted evidence or declaration regarding its business plans under the AIG name, or under its Ameristar Investment Group name, for that matter.
Finally, Complainant argues that, even if Respondent had no intention of selling the domain name, Respondent’s registration of the <aigproperties.com> domain name was still done in bad faith as Respondent had constructive notice of Complainant’s rights in the “AIG” mark prior to its registration of the disputed domain name. Respondent clearly knew or should have known of Complainant’s rights in the “AIG” mark and because Complainant’s mark appears in its entirety in the <aigproperties.com> domain name, the domain name is clearly connected with Complainant.
FINDINGS
Complainant has numerous trademark
registrations for the “
Complainant undoubtedly is a leading international insurance and financial services organization in the world. As such, its “AIG” trademark has earned very valuable goodwill and is known worldwide.
Complainant, through its member
companies, uses the “
Complainant and its member companies have shown advertising and promotional efforts for the services of Complainant’s member companies.
Respondent created the disputed domain name in 2004.
Respondent operates a site and offers real estate services.
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
holds numerous registrations with the United States Patent and Trademark Office
(“USPTO”) for the AIG mark (e.g., Reg. No. 1,151,229 issued April 14, 1981). Previous
panels have determined that Complainant’s registrations with the USPTO are
sufficient to establish rights in the AIG mark. See Am. Int’l Group, Inc. v.
Levin, FA 591254 (Nat. Arb. Forum Dec. 21, 2005); see also Am. Int’l Group,
Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005); see also Am. Int’l Group, Inc. v. Jenkins,
FA 435748 (Nat. Arb. Forum Apr. 22, 2005). Therefore, the Panel finds that
Complainant has established rights in the AIG mark pursuant to Policy ¶
4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb.
9, 2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <aigproperties.com> domain name contains the AIG mark in its entirety
with the addition of the generic term “properties” and the generic top-level
domain “gTLD” “.com.” The Panel finds that the addition of a generic term which
has an obvious relationship to Complainant’s business does not avoid a finding
of confusing similarity pursuant to Policy ¶ 4(a)(i).
Furthermore,
the Panel finds that the gTLD is without relevance to this analysis. See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also 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).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by
the <aigproperties.com> domain name. The WHOIS
information identifies Respondent as “Reggie Benjamin,” and Complainant asserts
that Respondent is not licensed or authorized to use the AIG mark. Therefore, the
Panel finds that Respondent is not commonly known by the <aigproperties.com> domain name pursuant to Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat.
Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by
the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on
the WHOIS information and other evidence in the record); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Respondent
is using the <aigproperties.com> domain name to promote
Respondent’s real estate services which compete with Complainant. The Panel
finds that this competing use of a confusingly similar domain name does not
constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain
name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent
used the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site); see also Computerized Sec. Sys., Inc. v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”).
Respondent is using the <aigproperties.com> domain name to advertise its own real estate services which compete with Complainant. The Panel finds that such use disrupts Complainant’s business by diverting potential customers to Respondent’s website. Therefore, the Panel finds that Respondent’s registration and use of the <aigproperties.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel also finds that Respondent’s <aigproperties.com> domain name is likely to cause confusion among
consumers searching for Complainant’s real estate services. Specifically,
consumers may become confused as to the affiliation, sponsorship, or endorsement
of the competing real estate services advertised on Respondent’s website. Therefore,
the Panel finds that Respondent’s registration and use of the <aigproperties.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v.
Bonds, FA 873143 (Nat. Arb.
Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith
registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is
taking advantage of the confusing similarity between the <metropolitanlife.us>
domain name and Complainant’s METLIFE mark in order to profit from the goodwill
associated with the mark.”); see also
Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site).
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 <aigproperties.com> domain name be TRANSFERRED
from Respondent to Complainant.
Jeffrey M. Samuels and Flip Petillion, Panelists
Dated: May 11, 2007
Dissenting
Opinion of Tyrus R. Atkinson, Jr, Panelist.
Respondent
contends that he operates a business called AmeriStar Investment Group, LLP. Respondent
encloses as an exhibit the Limited Liability Company Articles of Organization
issued to Respondent on July 13, 2004, for AMERISTAR INVESTMENT GROUP, LLC, by
the Secretary of State of California. The purpose of this business is stated to
be “sales and marketing.” Respondent alleges that the LLC is in the business of
sales and rentals of real properties. Respondent states that the LLC owns 10
residential properties in
In the opinion of this Panelist, Complainant’s showing is not sufficient to prove bad faith. It may not be possible in a proceeding such as this one to prove bad faith. It may require a judicial proceeding where discovery is available and the credibility of witnesses can be examined.
Nevertheless, a Panelist cannot find bad faith under the Policy unless the Panelist can fairly find that bad faith has been proved by proper facts and circumstances in the pleadings. I cannot find Respondent’s bad faith based upon Complainant’s showing.
Tyrus R. Atkinson, Jr, Panelist
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