American International Group, Inc. v.
Free Space Image Consultants Inc. a/k/a Mark Stever
Claim Number: FA0501000411737
PARTIES
Complainant
is American International Group, Inc. (“Complainant”),
represented by Caroline L. Stevens, of Leydig, Voit & Mayer, Ltd., Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is Free Space Image Consultants Inc. a/k/a Mark Stever (“Respondent”),
represented by Mark Stever, 409 Village Crescent, Kitchener, ON N2M 4V2,
Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aigpartners.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.
Honorable
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
February 2, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aigpartners.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 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 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@aigpartners.com by
e-mail.
A
timely Response was received and determined to be complete on February 28, 2005.
On March 8, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Richard B. Wickersham, Judge (Ret.), 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 investment, financial and business
consultation services. In addition, American International Group, Inc. and its
member companies use the “AIG” name as a corporate name. Complainant is the world’s leading
international 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. 1,273,845; 1,851,675; and 2,320,184, and
numerous other trademark registrations Complainant owns worldwide for the mark
“AIG.” Complainant also uses the AIG
mark in connection with its websites at <aig.com> and <aigag.com>,
among others.
Since
at least as early as 1968, Complainant, through its member companies, has used
the mark AIG in connection with insurance and financial investment, and
business consultation services. 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 mark AIG on various advertising and
promotional materials, including but not limited to, print advertisements,
product brochures, television advertisements and its websites at
<aig.com> and <aigag.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.
Complainant’s revenues in 2003 were over
$81 billion. Annually, Complainant spends millions of dollars
in advertising and promoting its member companies’ goods and services under the
AIG mark.
On
or around November 2, 2004, Complainant became aware that Respondent had
registered the domain name <aigpartners.com>. Upon learning of Respondent’s registration
of this domain name, Complainant reviewed the website linked to the domain
name. Complainant learned that
Respondent uses the domain name to link to an active site offering venture
capital opportunities in the “Adult Industry.” According to the website, such opportunities include adult
films, adult novelty products, adult establishments, and adult services. Not only is Complainant’s trademark
incorporated into Respondent’s domain name, but it is also prominently featured
on Respondent’s website and is used by Respondent as a company name. Long after Complainant, through its member
companies, had been advertising for and using the AIG mark to provide
financial, investment, and business consultation services under the AIG mark,
Respondent, without any authorization from Complainant, registered and began
using the domain name <aigpartners.com> and “AIG” name in
connection with a site offering financial and investment opportunities in the
adult industry
B.
Respondent
Respondent
pleads to the Forum that this action be dismissed on the grounds that
privileged information has been made part of this submission.
The
privileged information is made up on all correspondence labeled by Respondent
as: “Without Prejudice.” Without
Prejudice documents are protected as they were part of a settlement process.
The
submission of these privileged documents could bias an arbitration panel.
Respondent
does admit a conversation whereby Carolyn Stevens asked Respondent how much it
had into the website which was assumed to include development. Respondent responded that it was not sure
and would have to get back to Ms. Stevens.
Respondent had said that it thought it was between $500 - $1,000. Respondent feels that Complainant was acting
in bad faith.
Complainant
is pleading of protection of their own goodwill has caused bad faith against
Respondent by suggesting that this dispute relates to a pornographic
website. Respondent has not such links
and puts Complainant to the strict proof thereof.
Respondent
requests that the Panel issue a decision to dismiss this action on the grounds
that information submitted in the application may bias the Panel to make a fair
and objective decision.
C.
Additional Submissions
Both
parties submitted additional material and argued as follows:
Response To Respondent’s
Answer
In
his Response, Respondent addressed only Complainant’s arguments that Respondent
registered the <aigpartners.com>domain name in bad faith. Respondent did not contest Complainant’s
argument that the <aigpartners.com> and AIG mark are confusingly
similar, or that Respondent does not have a legitimate interest in the AIG
mark. Thus, Complainant addresses
Respondent’s arguments regarding bad faith below.
Respondent
argues that the Complaint be dismissed because Complainant submitted evidence
that is, as Respondent alleges, privileged.
Respondent did not state the rule upon which it bases its argument. Although it does not state as much,
presumably, Respondent has based its argument on a rule promulgated under the
U.S. Federal Rules of Evidence requiring the exclusion of correspondence
between parties that was sent during a “genuine settlement attempt.” However, NAF is not bound by the U.S.
Federal Rules of Evidence, and Complainant is not aware of any rule requiring
NAF to dismiss the Complaint or to exclude Complainant’s evidence under the
circumstances alleged by Respondent.
Even
if NAF had adopted such a rule, the rule is inapplicable in the case at hand,
because the correspondence upon which Respondent bases its argument was not
part of a genuine settlement attempt.
Thus, the correspondence should be admitted into evidence, and the Complaint
should not be dismissed.
The
correspondence upon which Respondent bases its Response should not be
considered as part of a genuine settlement attempt for a number of
reasons. As stated in the Complaint, on
November 5, 2004, Complainant’s counsel, Caroline Stevens, called Respondent
requesting that it transfer the <aigpartners.com> domain
name. Respondent admitted in its
Response that it told Complainant’s counsel that it would consider selling the
domain name for a price between $500 and $1,000, and said it would get back to
Complainant’s counsel with an actual figure.
However, Respondent did not follow up with Complainant’s counsel or with
Complainant, so Complainant, through its counsel, sent Respondent letters
offering to reimburse Respondent $100 for out-of-pocket costs associated with
registration of the domain name.
Response To
Complainant’s Response
Respondent
pleads to the Forum that Complainant should be submitted evidence to support
their claim for the domain name rather than bringing privileged information
into the hearing. Respondent feels that
Complainant did not deal in good faith in initial conversations with Respondent
by initiating a settlement process and then using that part in this hearing.
According
to Webster’s dictionary – pornographic carries the definition “sexually
explicit pictures, writing, or other material whose primary purpose is to cause
sexual arousal.” The active website
carries nothing of the sort and even it was – Respondent feels that it has
every right to the domain name.
Complainant in its’ original complaint, made a reference to Brown
& Bigelow, Inc. v. Rodela, (use of another’s well-known mark to provide
a link to a pornographic site is evidence of bad faith registration and
use). This is completely irrelevant to
the case at hand.
Respondent
has not presented arguments to defend its legal right to register the domain
name as this hearing, at present is not represented as a fair hearing of the
key complaint and in its’ stead – Complainant uses bad faith in slandering
Respondent to the Forum that this hearing be dismissed until such time
Complainant can submit a complaint relevant to the matter at hand.
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 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.
FINDINGS
Complainant
asserts that it is has established rights in the AIG mark through registration
of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
Nos. 1,172,557 issued October 6, 1981; 1,273,845 issued April 10, 1984;
1,851,675 issued August 30, 1994; 2,320,184 issued February 22, 2000). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); 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).
The
Panel finds that Respondent’s <aigpartners.com> domain name is
confusingly similar to Complainant’s AIG mark because the domain name
incorporates Complainant’s mark in its entirety and merely adds the generic
term “partners” and the generic top-level domain “.com.” The Panel concludes that such minor changes
are insufficient to negate a finding of confusing similarity pursuant to Policy
¶ 4(a)(i). 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 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
argues that Respondent is using the <aigpartners.com> domain name,
which contains a confusingly similar version of Complainant’s AIG mark, to
operate a website promoting investment opportunities in the adult industry that
compete with Complainant’s investment services. Thus, the Panel concludes that such competitive use is not a use
in connection with 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). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that respondent’s use of the disputed domain name
to redirect Internet users to a financial services website, which competed with
complainant, was not a bona fide offering of goods or services); see also Avery
Dennison Corp.
v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that respondent had
no rights or legitimate interests in the disputed domain name where it used
complainant’s mark, without authorization, to attract Internet users to its
business, which competed with complainant).
Furthermore,
Complainant asserts that nothing in the record indicates that Respondent is either
commonly known by the <aigpartners.com> domain name or is
authorized to register domain names featuring Complainant’s AIG mark. Thus, the Panel concludes that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“[N]othing 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 Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where respondent was
not commonly known by the mark and never applied for a license or permission
from complainant to use the trademarked name).
Moreover,
the Panel interprets Respondent’s offer to sell the domain name registration as
evidence that Respondent lacks rights and legitimate interests in the <aigpartners.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098
(Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
respondent’s apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Am. Nat’l Red
Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate
interests in the domain name is further evidenced by Respondent’s attempt to
sell its domain name registration to Complainant, the rightful holder of the
RED CROSS mark.”).
Complainant
asserts that Respondent’s offer to sell the domain name registration for a
price of $500-$1000, a price far in excess of Respondent’s out-of-pocket
expenses, is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the
domain names for sale); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name for valuable consideration
in excess of any out-of-pocket costs).
Additionally,
the Panel finds that Respondent’s use of the confusingly similar domain name to
operate a website featuring competing investment services constitutes
disruption and is evidence that Respondent registered and used the <aigpartners.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding respondent acted in bad faith by
attracting Internet users to a website that competes with complainant’s
business); see also Gen. Media
Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of complainant registered and used a
domain name confusingly similar to Complainant’s PENTHOUSE mark to host a
pornographic web site).
Furthermore,
Complainant asserts that Respondent is using the domain name to operate an
investment services website.
Complainant contends that because Respondent’s domain name features a
confusingly similar variation of Complainant’s AIG mark, consumers accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting investment website.
Thus, the Panel concludes that Respondent registered and used the <aigpartners.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where 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 complainant is the source of or
is sponsoring the services offered at the site); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
respondent’s site).
Moreover,
the Panel finds that Respondent registered the <aigpartners.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the AIG mark due to Complainant’s registration of the AIG mark with the
USPTO. 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.”).
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 <aigpartners.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: March 22, 2005
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