National
Arbitration Forum
DECISION
American International Group, Inc. v.
Debra Speyer
Claim Number: FA0502000422815
PARTIES
Complainant
American International Group, Inc. (“Complainant”), is represented by Caroline
L. Stevens, Two Prudential Plaza, Ste. 4900, Chicago, IL 60601.
Respondent is Debra Speyer (“Respondent”), Two Penn Center Plaza, Ste.
200, Philadelphia, PA 19102.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <aigfraud.com>, registered with Go
Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
February 16, 2005; the National Arbitration Forum received a hard copy of the
Complaint on February 17, 2005.
On
February 17, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aigfraud.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
February 21, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 14, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@aigfraud.com by e-mail.
A
timely Response was received and determined to be complete on March 14, 2005.
Complainant
submitted a timely additional submission to the National Arbitration Forum on
March 17, 2005.
On
March 24, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Complainant,
American International Group, Inc. through its member companies, uses the
"AIG" trademark in connection with its various financial and
insurance services. Complainant offers insurance services related
specifically to fraud through several of its subsidiaries. In addition,
American International Group, Inc. and its member companies use the AIG name as
a corporate name. Complainant is the leading insurance and financial services
organization with operations in more than 130 countries and jurisdictions. As
such, its "AIG trademark has earned very valuable goodwill and is known
worldwide. Complainant bases this Complaint on its numerous trademark
registrations for the "AIG mark, including United States Registration Nos.
1,15 1,229, 1,273,845; 1,851,675; and 2,320,184, and numerous other trademark
registrations Complainant owns worldwide for the AIG mark. Complainant
also uses the AIG mark in connection with its website at <aig.com>, among
others.
Since
at least as early as 1968, Complainant, through its member companies, has used
the AIG mark in connection with financial and insurance services, including
insurance services related to fraud. For example, AIG World Investigative
Resources, Inc. ("AIGWIR"), a subsidiary of Complainant, offers
insurance claim fraud prevention, detection, and recovery services.
Furthermore, Complainant's "Fraud Information Division" protects
Complainant's customers from those who would commit insurance fraud by
assisting in prevention, detection and prosecution of fraudulent claims.
Complainant, through its member companies, also plans to use the AIG FRAUD
SAFEGUARD mark with insurance underwriting services for fraud, embezzlement and
theft, and has filed U.S. application Serial No. 781,521,658 to cover these
services.
Complainant,
through its member companies, also offers fraud services under marks that,
while in and of themselves do not incorporate the AIG mark, are used in
conjunction with the AIG mark. Since at least as early as 2001,
Complainant has used the WEBMERCHANTGUARD mark for insurance underwriting
services to protect internet merchants against credit card fraud. Since
at least as early as 2000, Complainant has used the CRIME ADVANTAGE mark with
employee fraud insurance services. These marks are used in conjunction with the
AIG mark.
Complainant
has invested large sums of money to create, maintain, and promote the goodwill
associated with the AIG mark. Complainant has spent time and money advertising
and promoting the products and services offered in connection with the AIG mark
around the world by using the AIG mark on various advertising and promotional
materials, including but not limited to, print advertisements, product
brochures, television advertising and its website <aig.com>, among
others.
As
a result of Complainant's and its member companies' advertising and promotional
efforts for the services of Complainant's member companies, as well as their
dedication to providing quality services, Complainant's AIG mark is favorably
recognized and relied upon by the relevant trade and consuming public as
indicating high quality services originating exclusively from Complainant and
its member companies. Due to such efforts, Complainant's AIG mark has earned
very valuable goodwill and is well known worldwide.
To
protect the extensive goodwill symbolized by Complainant's AIG mark,
Complainant has sought and obtained trademark registrations for the mark in the
United States Patent and Trademark Office and in Trade Mark offices worldwide.
Some of the registrations of the AIG marks include: Registration Nos.
1,151,229; 1,273,845; 1,851,675; and 2,320,184. In addition, Complainant
owns approximately 600 trademark registrations incorporating the AIG mark
worldwide.
Complainant
also owns registrations that cover services related to fraud for marks that,
while not incorporating the AIG mark themselves, are used in conjunction with
the AIG mark. These registrations include Reg. Nos. 2,790,248
(WEBMERCHANTGUARD) and 2,886,706 ("CRIME ADVANTAGE").
AIG's
revenues in 2003 were over $81 billion. Annually, AIG spends millions of
dollars
in
advertising and promoting its member companies' goods and services under the
AIG mark. In 2003 alone, Complainant prominently advertised its AIG mark
and brand name in the NCAA basketball tournament, the Academy Awards (which is
the second most-watched show in television), the Triple Crown Horse races, the
NBA playoffs, the season finale of Survivor, the French and U.S. Open tennis
events, US Open Golf tournament, a number of late season NFL football games,
NCAA football games scheduled around Thanksgiving, the ALCS, NLCS and World
Series for Major League Baseball, a number of popular holiday programs like
Rudolph The Red-Nosed Reindeer and Charlie Brown Christmas.
Complainant
also worked out deals with the broadcast networks where an AIG advertisement
would appear immediately at the moment the basketball game goes into overtime.
In addition to its branding significance (this is the moment when you need to
rely on your "go-to players," like AIG), the time slot typically
reaches more consumers than any other moment of the game. A good example of
this strategy was seen when AIG's "overtime" advertisement ran just
after the bottom of the ninth inning of the seventh game of the ALCS between
the Yankees and the Red Sox. In the 2004 Super Bowl, Complainant negotiated to
have its advertisement run in the last commercial slot of the game, with no
other advertisements attached to it to distract the viewer. More viewers
watched Complainant's advertisement than any other advertisement that ran
during the Super Bowl.
In
addition to major national televised campaigns, Complainant has run print
advertisements prominently featuring its AIG marks in nationally circulated
news publications such as The New York Times, Fortune, Time and the like.
(1) On
or around November 30, 2004, Complainant became aware that Respondent had
registered the domain name <aigfraud.com>, which prominently features
Complainant's AIG mark. Complainant reviewed the website linked to the domain
name, and learned that Respondent had linked the domain name to a webpage for
the Go Daddy Software, Inc. registrar, which makes no reference to Complainant
or to Complainant's services. Long after Complainant, through its member
companies, had been advertising for and providing financial and insurance
services under the AIG mark, Respondent, without any authorization from
Complainant, registered and began using the domain name <aigfraud.com>
and kept it linked to a webpage for the Go Daddy Software, Inc. registrar.
Therefore,
on December 20, 2004, counsel for Complainant sent a letter via e-mail with a
confirmation copy sent via Federal Express to the address listed for the
Respondent in the WHOIS information for the domain <aigfraud.com>.
In its letter, Complainant advised Respondent of Complainant's rights in its
AIG mark, and requested that Respondent explain its reasons for using AIG in
the <aigfraud.com> domain name, and explain the goods and/or
services offered by Respondent. Respondent did not respond to
Complainant's initial correspondence.
Having
received no response, counsel for Complainant sent a follow-up letter via
e-mail with confirmation copies sent via Federal Express to Respondent on
December 28, 2004. On December 28, 2004, Respondent sent Complainant a
letter stating that she had registered the domain name so people could use the
domain name and linked website to contact her if they want to bring an action
against Complainant. However, more than three months after Complainant's
registration of the domain name, the domain name remains linked to Go Daddy
Software, Inc.'s webpage, which does not provide any explanation for use of the
AIG mark in the domain name.
The
<aigfraud.com> domain name is confusingly similar to Complainant's
AIG trademark. Consequently, Internet users are likely to mistakenly believe
that the domain name links to information and/or services provided by or
affiliated with Complainant, and that the website regards Complainant's
insurance services related to fraud. Respondent's domain name incorporates
Complainant's AIG mark in its entirety, along with the standard English word
"fraud." Numerous ICANN decisions have held that the addition
of a non-distinctive, descriptive, or generic term, such as "fraud,"
does not change the overall impression of a mark. See American
International Group, Inc. V. Lobsang Marques, FA 126832 (Nat. Arb. Forum
Dec. 6, 2002) (holding that the domain <aigfinancial.net> was confusingly
similar to Complainant's AIG mark, despite the addition of the descriptive term
"financial," because Complainant's AIG mark is well-known throughout
the world and the term "financial" is regularly associated with
Complainant).
For
example, in The Royal Bank of Scotland Group plc v. natwestfraud.com and
Umang Malhotra, D2001-0212 (WIPO June 18, 2001), a three-member panel found
that the use of another party's trademark with the common English word
"fraud" was likely to cause confusion. In this case, the
respondent had registered the <natwestfraud.com> domain name, combining
the NATWEST trademark and the word "fraud." Although the respondent
argued that it used to word "fraud" to indicate that the domain name
was to be used as a complaint site against Natwest, the panel stated, "The
use of the word 'fraud' does not necessarily imply anything derogatory of the
Complainant. The site could be taken as one designed to publicize frauds
committed upon Natwest."
The
panel also noted that, once people accessed the website linked to the
<natwestfraud.com> domain name, it was clear that the website pertained
to frauds allegedly committed by (and not upon) Natwest. Notwithstanding
the fact that the content of the website might have cleared up any confusion,
the panel still believed that confusion was likely, because use of the common
English word "fraud" was insufficient to obviate consumer confusion.
Like
the <natwestfraud.com> case, because Respondent uses Complainant's famous
AIG mark with the word "fraud," confusion is likely. Even though
Respondent alleges that the domain name is to be used by people to contact her
if they want to bring an action against Complainant, the use of the word fraud
does not necessarily communicate this purpose. The <aigfraud.com>
domain name is even more likely to cause confusion than the
<natwestfraud.com> domain name, because Complainant actually offers
services related to fraud, namely, insurance coverage for fraud. As the <aigfraud.com>
domain name is not linked to an active website, consumers that go to the domain
name looking for AIG may be frustrated and may not continue their search for
AIG.
Furthermore,
even if Respondent links the <aigfraud.com> to a website that,
when accessed, may indicate that the website is not affiliated with
Complainant, the mere usage of Complainant's trademark as part of the domain
name is likely to divert online traffic and cause "initial interest
confusion." See Brookfield Communications, Inc. v. West Coast
Ent. Corp., 174 F.3d 1036 (9th Cir. 1999) (holding that use of the domain
name <moviebuff.com> was actionable initial interest confusion because it
diverted online traffic).
In
summary, Respondent's domain name <aigfraud.com> is clearly
confusingly similar to Complainant's AIG mark, because the domain name
prominently features Complainant's AIG trademark, because Complainant offers
services related to fraud, and because the linked webpage does not explain the
reason for using the AIG mark as part of the domain name, thereby drawing
consumers to the website only to have their expectations of finding information
concerning Complainant frustrated. Respondent's use of AIG as part of the
domain name is likely to cause confusion amongst consumers as to the source of
the services provided through Respondent's website.
Based
on the foregoing, it is clear that confusion is likely.
(2)
Respondent should not be considered as having rights or legitimate interests in
the <aigfraud.com> domain name. Respondent does not have
rights or a legitimate interest in a domain name if Complainant has prior rights
in the trademark that precede Respondent's registration of the domain name, if
the Respondent is not a licensee of Complainant, and if Respondent has not
received permission or consent to use the trademark. See Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,2000).
Respondent
in this case does not have rights or a legitimate interests in the domain name,
because Complainant has superior rights in the AIG mark. Respondent only
recently registered the domain name on September 4, 2004. Thus, Respondent's
use of the AIG mark began long after Complainant's use of the AIG mark.
Furthermore, Respondent is not a licensee of Complainant, and Complainant did
not authorize or consent to Respondent's use of the "AIG" mark in
connection with Respondent's domain name.
Moreover,
Complainant began using the AIG mark in connection with its services long
before Respondent registered the domain name <aigfraud.com>, and
Respondent admitted to having actual knowledge of Complainant's and its AIG
trademark. Registration of a domain name with actual or constructive knowledge
of its use as a mark suggests no rights or legitimate interests and can serve
as evidence of bad faith. See The Prudential Insurance Company of
America v. Stonybrook Investments, Ltd, FA 100182 (Nat. Arb. Forum Nov. 15,
2001), see also Samsonite Corporation v. Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17,2000).
Respondent
has admitted to using the <aigfraud.com> domain name to capitalize
on the fame of the AIG mark, thereby resulting in her own economic benefit.
Such a purpose does not give Respondent rights or a legitimate interests in the
AIG mark, and it is not necessary for Respondent to use the AIG mark as part of
a domain name in order to provide her services.
Consequently,
Respondent should not be considered as having rights or legitimate interests in
the AIG mark or in the domain name discussed above.
(3)
The domain name <aigfraud.com> was registered and is being used in
bad faith by Respondent. Respondent admitted to being aware of Complainant's
rights in the AIG mark when she registered the domain name at issue. Respondent
admitted to using the domain name to communicate with people familiar with
Complainant's trademark. As noted above, registration of a domain name with
actual knowledge of its use as a mark suggests no rights or legitimate
interests and can serve as evidence of bad faith. See Prudential Insurance
Company of America v. Stonybrook Investments, Ltd., FA 100182 (Nat. Arb.
Forum Nov. 15, 2001); see also Samsonite Corporation v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17,2000).
In
addition, Respondent's registration of Complainant's famous trademark in its
entirety as part of its domain name is evidence of bad faith. See The
Neiman Marcus Group, Inc. v. Huh Jinwang, FA109047 (Nat. Arb. Forum May 17,
2002) (finding bad faith in registering domain name <neimanmarcus.net>); se
also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding
bad faith when (1) the domain name contains Complainant's mark in its entirety,
(2) the mark is a coined word, well-known and in use prior to Respondent's
registration of the domain name, and (3) Respondent fails to allege any good
faith basis for use of the domain name).
Furthermore,
Respondent is "sitting on" the domain name. That is, since Respondent
registered
the domain name, Respondent has not posted any material, and used the domain
name only to link to Go Daddy Software, Inc.'s webpage. Such lack of action has
been held to indicate no rights or legitimate interests in a domain. See
Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001)
(finding no rights or legitimate interests in the disputed domain where
Respondent merely passively held the domain name); see also Aircraft
Owners & Pilots Association v. Albanian Oil Paintings & Antiques,
FA 94183 (Nat. Arb. Forum Mar. 30, 2000) (finding no legitimate business
interest in the disputed domain due to Respondent not using the name).
In
summation, Complainant owns valid, protectible rights in the AIG trademark, and
Respondent has registered a domain name that is confusingly similar to
Complainant's AIG mark without rights or legitimate interests in the mark or in
the domain name. Further, Respondent has incorporated Respondent's famous
trademark in its entirety as party of the domain name, and Respondent is merely
sitting on the domain name. Therefore, according to Paragraph 4(b) of the ICANN
Uniform Domain Name Dispute Resolution Policy, Respondent has acted in bad
faith.
B.
Respondent
This
domain name was to be linked to the website at <wallstreetfraud.com> and
ultimately linked to a website dealing with insurance fraud. To date this
domain name and other domain names have not been linked due to letters received
from AIG. <Wallstreetfraud.com> is a website that provides consumers with
information and services regarding their rights in bringing lawsuits against
brokerage firms for their fraudulent actions. <Wallstreetfraud.com>
is owned and operated by the Law Offices of Debra G. Speyer, my law firm. I
have expanded my law practice to represent individuals who have been defrauded
by insurance companies. AIG is one of the firms that I will be bringing actions
against.
AIG
recently agreed to pay $126 million to settle allegations that it helped
clients to commit accounting fraud. AIG is also among several large insurance
companies named in a civil lawsuit by New York’s Attorney General’s office
regarding bid rigging and taking payoffs from insurance firms in return for
directing business their way. AIG has demonstrated that its practices have been
fraudulent.
The
<aigfraud.com> website will describe the fraud perpetrated by AIG
and advise consumers what their rights are to bring actions against AIG. AIG’s
own fraudulent actions have taken this domain name out of the
"protected" area that AIG argues it is entitled to. If the
Administrative Panel rules in favor of AIG, it will be sending a strong message
to firms that companies such as AIG can defraud the public and be shielded by
their actions.
C.
Additional Submissions
For
clarification purposes, Complainant does not object to Respondent's intended
use of the domain name <wallstreetfraud.com>, as described in
Respondent's Response. Complainant is not attempting to deny Respondent a forum
to express her views concerning Complainant or any other party. Further,
Complainant does not own trademark rights in the WALL STREET mark.
Notwithstanding, it is not necessary for Respondent to use the <aigfraud.com>
domain name for her purposes. Her use of the website linked to the <aigfraud.com>
domain name as a forum for voicing opinions on insurance fraud is likely to
confuse consumers, because Complainant sells fraud insurance.
Complainant
objects to the claims made in paragraph two of Respondent's response, because
they are not relevant to this proceeding and are not accurate.
Finally,
a ruling in this matter in Complainant's favor would not, as Respondent
suggests, send a message to firms such as Complainant that they can shield
knowledge of improper action. Rather, a ruling in Complainant's favor
would send a message to the public that domain names cannot be registered in
bad faith that are confusingly similar to trademarks owned by other
parties. Even if the Panel rules in Complainant's favor, Respondent will
still be able to achieve her goals of disseminating information concerning
alleged fraud. Respondent will simply have to do so through a domain name that
is not confusingly similar to Complainant's trademark.
FINDINGS
I
make the following findings:
the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
Respondent has no rights or legitimate
interests in respect of the domain name; and
the domain name has been registered and
is being used in bad faith.
DISCUSSION
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”) instructs this Panel to “decide a complaint on the basis of the
statements and documents submitted in accordance with the Policy, these Rules
and any rules and principles of law that it deems applicable.”
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
Respondent has no rights or legitimate
interests in respect of the domain name; and
the domain name has been registered and
is being used in bad faith.
Identical
and/or Confusingly Similar
Complainant has
established rights in the AIG marks and marks incorporating AIG through registration
with several trademark authorities across the world, including the United
States Patent and Trademark Office (e.g., Reg. No. 1,151,229, issued April 14,
1981; Reg. No. 1,172,557, issued October 6, 1981; Reg. No. 1,062,446, issued
March 29, 1977). Complainant began using the AIG mark in connection with
various financial and insurance services, including services related to
insurance fraud through its member companies since as early as 1968. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. Respondent has the burden of refuting
this assumption.).
Complainant has
used the AIG mark in commerce since 1968. Complainant has established
common law rights in the mark through its continuous use in commerce. See
Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding
common law rights in a mark where its use was continuous and ongoing, and
secondary meaning was established); see also Fishtech v. Rossiter, FA
92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law
rights in the mark FISHTECH which it has used since 1982).
The domain name
is confusingly similar to Complainant’s AIG mark because the domain name fully
incorporates the mark and merely adds the descriptive term “fraud,” which
describes a service Complainant’s business offers (not committing it, but
investigating it). While Complainant provides services related to fraud
detection and investigation, it has not sought (or obtained) a trademark on the
phrase “AIG fraud.” The addition of a descriptive term such as “fraud” which
also describes part of Complainant’s business does not change the overall
impression of the mark. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of
Complainant combined with a generic word or term); see also Am. Online, Inc.
v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that Respondent’s domain names, which incorporated Complainant’s
entire mark and merely added the descriptive terms “traffic school,” “defensive
driving,” and “driver improvement” did not add any distinctive features capable
of overcoming a claim of confusing similarity); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to
Complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which Complainant is engaged, does not take
the disputed domain name out of the realm of confusing similarity).
This Panel’s
decision might well have been different on this factor if the second word in
the domain name did not generically describe an aspect of Complainant’s
business because there would have been no confusion.
The addition of
the generic top level domain “.com” in the domain name is irrelevant in
determining whether the domain name is confusingly similar to Complainant’s
mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO
Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶4(a)(i) is satisfied); see also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant).
Rights
or Legitimate Interests
Upon discovering
Respondent’s use of the <aigfraud.com> domain name, Complainant
sent Respondent a letter requesting that Respondent explain its reasons for
using the AIG mark in the disputed domain name and to explain the goods or
services offered by Respondent. After ignoring the initial request,
Respondent replied the disputed domain name was registered for the public to
use the linked website (something that is very easy to do) at the domain name
to contact Respondent if they desired to bring legal proceedings against
Complainant. No web site was ever linked to <aigfraud.com>,
despite the domain name being created on October 28, 2004.
Respondent’s
response is written on Respondent’s letterhead, which states, “Law Offices of
Debra G. Speyer” and “Bar Member: PA, NY FL, D.C., CT.” Respondent’s use
of a domain name similar to another’s mark in order to solicit and attract
business does not constitute a bona fide offering of goods or services
pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶4(c)(iii). Respondent lacks rights and legitimate interests in
the domain name because Respondent never established a web site, linked to a
web site nor made a bona fide offering of goods and services. See
MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no
rights or legitimate interests in the famous MSNBC mark where Respondent
attempted to profit using Complainant’s mark by redirecting Internet traffic to
its own website); see also Pfizer, Inc. v. Internet Gambiano Prods.,
D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was
clearly well-known at the time of Respondent’s registration of the domain name
it can be inferred that Respondent is attempting to capitalize on the confusion
created by the domain name’s similarity to the mark).
Respondent
asserts the domain name will be used to solicit business for Respondent’s law
firm by linking to another web site. More than three months after
Respondent’s registration of the domain name, the domain name remains linked
solely to Go Daddy Software, Inc.’s “parking” web page, which does not provide
any explanation for the use of the AIG mark (or bring Respondent any business
for that matter). Respondent failed to provide evidence of any
demonstrable preparations to use the web site, causing the Panel to conclude
Respondent has not acquired any rights to the domain name. See Open
Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding
that Respondent did not establish rights and legitimate interests in the domain
name where Respondent mentioned that it had a business plan for the website at
the time of registration but did not furnish any evidence in support of this
claim); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150
(WIPO May 2, 2000) (finding that Respondent had no rights or legitimate
interests where he decided to develop the website for the sale of wall products
after receiving Complainant’s “cease and desist” notice); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
when Respondent declares its intent to develop a website, “[Policy ¶]4(c)(i)
requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to
use the domain name, and 2) that such preparations were undertaken ‘before any
notice to [Respondent] of the dispute’”).
This Panel’s
decision might well have been different on this factor if the domain name had
been used for some demonstrable purpose.
There is nothing
in the Record or the WHOIS database that indicates that Respondent is currently
known by the disputed domain name, pursuant to Policy ¶4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy
¶4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Registration
and Use in Bad Faith
The <aigfraud.com>
domain name was registered and is being used in bad faith by Respondent as
evidenced by Respondent’s admission that Respondent had actual knowledge of
Complainant’s mark and was using the domain name to capitalize on Complainant’s
mark and communicate with people familiar with Complainant’s mark.
Registration of a domain name that is confusingly similar to another’s mark
with actual or constructive knowledge of another’s rights in the mark evidences
bad faith registration and use pursuant to Policy ¶4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("[w]here an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse"); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
Respondent is
appropriating a domain name that is confusingly similar to Complainant’s mark
to attract Internet users for commercial gain, pursuant to Policy
¶4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb.
Forum Aug. 29, 2000) (finding that, given the similarity of Complainant’s marks
with the domain name, consumers will presume the domain name is affiliated with
Complainant; Respondent is attracting Internet users to a website, for
commercial gain, by creating a likelihood of confusion with Complainant’s mark
as to the source, sponsorship, or endorsement of Respondent’s website); see
also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO
Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain
name in question and there are no other indications that Respondent could have
registered and used the domain name in question for any non-infringing
purpose); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743
(WIPO Aug. 17, 2000) (finding bad faith under Policy ¶4(b)(iv) where Respondent
linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a
website run by Respondent, creating confusion for Internet users regarding the
endorsement, sponsorship, of affiliation of the website).
Respondent is
passively holding the disputed domain name, does not use the domain name for
email, does not use the domain name for e-commerce, has not established a web
site, and uses the domain name only to link to Go Daddy Software, Inc.’s
“parked-coming soon” webpage. Passively holding a domain name requires a
greater showing from the registrant that the domain name was not registered in
bad faith and is not being used in bad faith. After all, what business
purpose is there for simply forwarding a domain name to another web site?
This arrangement (without more) suggests traffic is being funneled from the new
domain name to the existing web site.
While there may
be bona fide business reasons for such an arrangement, Respondent has
failed to address this issue. This leads the Panel to find Respondent’s
actions constitute bad faith registration and use pursuant to Policy
¶4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing
domain name without active use can constitute use in bad faith); see also
DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that Respondent’s passive holding of the domain name satisfies the
requirement of Policy ¶4(a)(iii)).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <aigfraud.com> domain name be TRANSFERRED
from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: Monday, April 7, 2005