American International Group, Inc. v.
Debra Speyer
Claim Number: FA0505000481752
PARTIES
Complainant
is American International Group, Inc. (“Complainant”),
represented by Claudia W. Stangle,
Two Prudential Plaza, Suite 4900, Chicago, IL 60601. Respondent is Debra Speyer
(“Respondent”), 2 Bala Plaza, Bala Cynwyd, PA 19004.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aiglawsuit.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.
Jonas
Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 20, 2005.
On
May 20, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <aiglawsuit.com>
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
May 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 13,
2004 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@aiglawsuit.com by e-mail.
A
timely electronic copy of the Response was received on June 13, 2005. However, the Response was not received in
hardcopy form as required by ICANN Rule #5(a). Thus, the Response was
deficient. However, according to paragraph 10(d) of the Rules the Panel is free
to determine the admissibility of the evidence. In view of inter alia Strum v. Nordic Net Exchange AB, FA
102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that ruling a Response
inadmissible because of formal deficiencies would be an extreme remedy not
consistent with the basic principles of due process) the Panelist has decided
to consider the deficient Response on its merits.
On June
17, 2005 the Complainant filed a timely reply to the Response. On June 22, 2005
Additional Submissions were filed by the Respondent in a timely manner. Since
the reply and the Additional Submissions comply with Supplemental Rule 7 the
Panelist will consider this supplemental material.
On June 21, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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 lawsuits, legal liability, litigation, and other
law-related matters through several of its member companies. 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. 1,151,229, 1,273,845; 1,851,675; and 2,320,184,
and numerous other trademark registrations Complainant owns worldwide for the
mark AIG. (See Exhibit A, Shannon
Declaration, Exhibit B). Complainant
also uses the AIG mark in connection with its website at <aig.com>, among
others.
Since
at least as early as 1968, Complainant, through its member companies, has used
the mark AIG in connection with a variety of financial and insurance
services. Complainant has used the AIG
mark in connection with a number of other trademarks covering services related
to lawsuits, as explained below.
Since
1998, through one of its member companies, Complainant has used the LAWGUARD
trademark in conjunction with the AIG mark for its insurance and risk
management products and services that address law firms’ various liability
exposures, including insurance and risk management concerning lawsuits filed
against law firms. Since 1997, through
its member companies, Complainant has used the BRIEFBASE mark in conjunction
with the AIG mark for the provision of an online database of certain types of
lawsuits. Since 1998, through its
member companies, Complainant has also used the GLOBAL MANAGEMENT PROTECTION
PROGRAM trademark in conjunction with the AIG mark for its insurance services
in the field of legal liability. These
services include coverage to publicly held companies in the event they incur
costs as a result of lawsuits.
Since
1997, through its member companies, Complainant has used the BEST DEFENSE mark
in conjunction with the AIG mark for insurance consultation in the field of
lawsuit insurance management. Since
1997, through its member companies, Complainant has used the PRODUCTIVITY EDGE
mark in conjunction with the AIG mark for management of lawsuits concerning
insurance claims. Since 1997, through
its subsidiaries, Complainant has used the SECURITIES PLUS mark in conjunction
with the provision of management liability insurance underwriting related to
lawsuits.
In
addition to these services, Complainant publishes the “AIGCS Chronicle” on a
bimonthly basis for distribution to one of its member company’s customers,
distributors and employees. The “AIGCS Chronicle”
features articles concerning the “AIG Litigation Management Program” and the
“AIG Litigation Management Group,” both used by Complainant’s member companies
to manage litigation related to insurance claims.
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 advertising and its website at <aig.com>, among others. (See Shannon Declaration, Exhibit B).
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 (Shannon Declaration, Exhibit B).
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.
(See Exhibit A). In addition,
Complainant owns approximately 600 trademark registrations incorporating the
AIG mark worldwide. (See Exhibit A; Shannon
Declaration, Exhibit B). Complainant
also owns registrations that cover services related to lawsuits for marks that,
while not incorporating the AIG mark themselves, are used in conjunction with
the AIG mark, including the following:
Reg. No. 2,277,081 for LAWGUARD; Reg. No. 2,222,589 for BRIEFBASE; Reg.
No. 2,425,915 for GLOBAL MANAGEMENT PROTECTION PROGRAM; Reg. No. 2330741 for
BEST DEFENSE; Reg. No. 2,496,508 for PRODUCTIVITY EDGE; and Reg. No. 2,551,414
for SECURITIES PLUS.
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. (Shannon Declaration, Exhibit B).
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. (Shannon Declaration, Exhibit B). 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. (See Exhibits A and B).
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. (See Exhibits A and B).
Describe
the grounds on which this complaint is made. ICANN Rule 3(b)(ix). In particular, the complaint must describe:
1.
The manner in which the domain name is identical or confusing;
2.
Why the Respondent should be considered as having no rights or legitimate
interests in the domain name; and
3.
Why the domain name should be considered as having been registered and used in
bad faith.
(1) On or around November 30, 2004,
Complainant became aware that Respondent had registered the <aiglawsuit.com>
domain name, which prominently features Complainant’s AIG mark. Complainant reviewed the website linked to
the domain name, and learned that Respondent had parked the domain name with a
webpage for the Go Daddy Software, Inc. registrar, which made no reference to
Complainant or to Complainant’s services.
Therefore,
on December 20, 2004, counsel for Complainant sent a letter via e-mail with a
confirmation copy sent via Federal Express to Respondent, as listed in WHOIS
information for the domain name. 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 <aiglawsuit.com>
domain name, and explain the goods and/or services offered by
Respondent. (See Exhibit C). 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. (See Exhibit D). On December 28, 2004, Respondent sent
Complainant a letter stating that she had registered the domain name so people
could use the domain name to contact her if they want to bring an action
against Complainant. (See Exhibit E).
Recently,
Respondent linked the <aiglawsuit.com> domain name to the
<wallstreetfraud.com> domain name, which links to a website featuring
images of the Statue of Liberty and digital stock market signs, as well as text
explaining “Wall Street Fraud is a law firm dedicated to aggressively
recovering investor stock market and other losses caused by brokerage firm
fraud or mismanagement.” (See Exhibit
F.) Therefore, Complainant decided to
proceed with the present action.
The
<aiglawsuit.com> domain name is confusingly similar to
Complainant’s AIG trademark, because Respondent’s domain name incorporates
Complainant’s AIG mark in its entirety, along with the standard English word
“lawsuit,” which is insufficient to alert Internet users that the <aiglawsuit.com>
domain name is not affiliated with or sponsored by Complainant.
Numerous
ICANN 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. For example, in Reliv’ Int’l Inc. v. Kelly, FA 96312
(Nat. Arb. Forum Feb. 5, 2001), the Panel held that the
<relivlawsuits.com> domain name was confusingly similar to the RELIV
trademark, because the domain name merely combined the trademark with the
generic word “lawsuits,” even though Respondent had linked the domain name to a
website bringing attention to a lawsuit filed against the complainant. Likewise, the <aiglawsuit.com>
domain name is confusingly similar to Complainant’s trademark, even if
Respondent linked the domain name to a website concerning lawsuits against
Complainant.
In
a case concerning Complainant and Respondent, Am. Int’l Group, Inc. v. Speyer, FA 422815 (Nat. Arb. Forum Apr. 7,
2005), the Panel found that the <aigfraud.com> domain name was
confusingly similar to Complainant’s AIG mark, because the domain name fully
incorporated the AIG mark and merely added the descriptive term “fraud,” which
describes a service offered by Complainant.
As in the <aigfraud.com> case, the addition of a descriptive and
common English term such as “lawsuit,” which describes services offered by Complainant,
is insufficient to overcome any likelihood of confusion. See Am. Int’l Group, Inc. v. Marques, FA 126832 (Nat. Arb. Forum Dec.
6, 2002) (finding domain <aigfinancial.net> was confusingly similar to
Complainant’s AIG mark, despite the addition of the descriptive term
“financial,” “based on the well-known status of Complainant’s mark throughout
the world” and in that “the term ‘financial’ is regularly associated with
Complainant”).
Even
if Respondent were to add additional explanatory text to the website linked to
the <aiglawsuit.com> domain name, 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
e.g., Brookfield Commc’ns, 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 <aiglawsuit.com> is clearly
confusingly similar to Complainant’s AIG mark, because the domain name
prominently features Complainant’s AIG trademark, because Complainant offers
insurance and financial services related to lawsuits, and because it is not
necessary for Respondent to use Complainant’s trademark as part of the domain
name in order to advertise and promote her “Wall Street Fraud” services.
(2) Respondent should not be considered
as having rights or a legitimate interest in the <aiglawsuit.com>
domain name. In this case, the
Respondent does not have rights or a legitimate interest in a domain name,
because Complainant has prior rights in the trademark that precede Respondent’s
registration of the domain name, Respondent is not a licensee of Complainant,
and Respondent has not received permission or consent to use the
trademark. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000).
Moreover,
Complainant began using the AIG mark in connection with its services long
before Respondent registered the domain name <aiglawsuit.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 Ins. Co. of Am. v. Stonybrook Invs., Ltd., FA 100182
(Nat. Arb. Forum Nov. 15, 2001) (citing Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000)).
Respondent
is using the <aiglawsuit.com> domain name to capitalize on the
fame of the AIG mark, thereby resulting in her own economic benefit. See Am. Int’l Group, Inc. v. Speyer, FA 422815 (Nat. Arb. Forum Apr. 7,
2005). Such a purpose does not give
Respondent rights or a legitimate interest in the AIG mark, and it is not
necessary for Respondent to use the AIG mark as part of a domain name in order
to provide her services. Consequently,
Respondent should not be considered as having rights or a legitimate interest in
the AIG mark or in the domain name discussed above.
(3) The domain name <aiglawsuit.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 The Prudential Ins. Co. of Am. v. Stonybrook Invs., Ltd., FA 100182
(Nat. Arb. Forum Nov. 15, 2001) (citing Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000)).
In
Am. Int’l Group, Inc. v. Speyer, FA
422815 (Nat. Arb. Forum Apr. 7, 2005), the Panel stated that the 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.” The correspondence upon which the
<aigfraud.com> decision was made is the identical correspondence used as
a basis for this complaint and attached hereto as Exhibit E.
In
the <aigfraud.com> case, the Panel further noted that the Registrant was
appropriating a domain name that was confusingly similar to Complainant’s mark
to attract Internet users for commercial gain, which is evidence of bad faith
pursuant to Policy Para. 4(b)(iv) (citing 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 of the
website)).
Moreover,
the fact that Respondent is using the <aiglawsuit.com> website to
trade off Complainant’s goodwill and link it to a website for her commercial
gain based on sales of Respondent’s services is further evidence of bad
faith. See Reliv Int’l Inv. v. Kelly, FA 96319 (Nat. Arb. Forum Feb. 5,
2001); see also Mission
KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000) (finding that
Respondent registered the domain name in bad faith where Respondent published
negative comments regarding the Complainant’s organization). In the Mission
KwaSizabantu case, the Panel recognized both parties rights of freedom of
speech, but noted that it was not necessary for the respondent to use
complainant’s trademark in order to express his views, and that respondent’s
claims of registering the mark in good faith did not justify the use of the domain
name. The same applies to this
case.
Finally,
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>); see
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).
In
summary, 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 a legitimate interest in the mark or
in the domain name. Further, Respondent
has incorporated Respondent’s famous trademark in its entirety as part of the
domain name, and is using the domain name for her own commercial gain. Furthermore, it is not necessary for
Respondent to use Complainant’s trademark as part of a domain name in order for
Respondent to conduct her services, as evidenced by the fact that the <aiglawsuit.com>
domain name links to the <wallstreetfraud.com> domain name. Therefore, according to Paragraph 4(b) of
the ICANN Uniform Domain Name Dispute Resolution Policy, has acted in bad
faith.
The
Complainant requests that the Panel issue a decision that the registration of
the domain name be transferred to American International Group, Inc. ICANN Rule 3(b)(x); ICANN Policy 4(i).
In
its Response the Respondent has stated the following.
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”) instructs the 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.
3. The domain name has been registered and
is being used in bad faith.
With
regard to element number one, the domain name registered by Respondent is not
identical or confusingly similar to a trademark or service mark in which
Complainant has rights. No reasonable person would be confused by the website <www.aiglawsuit.com>.
The second word in the domain name - lawsuit - does not generically describe a
significant aspect of Complainant’s business and as such, there will be no
confusion as to this website. AIG is not in the lawsuit business. No reasonable person would conclude that <www.aiglawsuit.com>
is an AIG website. Any reasonable person looking at this website would conclude
that the domain name and website involve assisting victims in bringing lawsuits
against AIG.
With
regard to element number two, this domain name is linked to the website <www.wallstreetfraud.com>.
More specifically, the Legal Scandals section of the website
<www.wallstreetfraud.com> (Exhibit A) deals with the AIG
misrepresentation and frauds. Respondent has also set up an independent stand
alone website called <www.aiglawsuits.com>. (Exhibit B). The domain name
<www.aiglitigation.com> is linked to the <www.aiglawsuits.com>
site. Due to the pending dispute
involving <www.aiglawsuit.com>, the registrar had intervened on
behalf of AIG and stopped the forwarding of <www.aiglawsuit.com>
to <www.aiglawsuits.com>. Clients send e-mail to Respondent at
info@aiglawsuits.com through the <www.aiglawsuits.com> site. Respondent could not open an e-mail account
for <www.aiglawsuit.com> due to the pending dispute involving <www.aiglawsuit.com>
as the registrar had intervened on behalf of AIG and stopped the opening of an
e-mail account. The purpose of <www.aiglawsuit.com>,
<www.aiglawsuits.com> and <www.aiglitigation.com> is to provide
consumers with information and services regarding their rights regarding
lawsuits against brokerage firms and insurance companies. These sites are owned
and operated by the Law Offices of Debra G. Speyer.
That
AIG has perpetrated illegal, dishonest or fraudulent activity has been
established, and there are ongoing investigations and prosecutions in progress.
For example, AIG recently agreed to pay $126 million to settle allegations that
it helped clients to commit accounting fraud. The 5th Amendment has already
been invoked in some instances. 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 and admitted that its practices have been fraudulent. AIG
subsidiaries were recently fined by the NASD for securities violations as
well. Furthermore, AIG has been
involved with overcharging clients for insurance policies by utilizing said corrupt
and fraudulent schemes involving fixing of bids. Many innocent victims have
lost significant sums of money as a result of multiple frauds and
misrepresentations perpetrated by AIG.
It is public knowledge that AIG has perpetrated fraud and misrepresentations,
and there are many who seek resources to offer them a chance at legal
redress. This domain name is an obvious
resource for such persons, and it can in, no way, be reasonably claimed
otherwise as AIG has become implicated in the media for utilizing methodologies
which are inherently dishonest and which beg for civil legal redress. Currently, Attorney General Elliot Spitzer
is prosecuting a variety of persons and corporations in the insurance industry
for these types of illegal and fraudulent activities. If the Administrative
Panel rules in favor of AIG, it will be certainly legally incorrect and will be
viewed with extreme disfavor among those in the media and legal community, and
among those who have been defrauded.
Please note that there is precedent for <www.enronfraud.com> to
exist as a site unaffiliated with Enron.
Ruling in favor of AIG would be sending the strongest message possible
to firms such as AIG that they can mislead and defraud the public and remain
shielded. If they wish to protect their good name, then let their name remain
good by virtue of their deeds and not by convoluted legal logic.
With
regard to element number three, <www.aiglawsuit> is not
confusingly similar to AIG’s and as such this mark is not being used in bad
faith.
In
conclusion, 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. Respondent has not proven each of the
elements pursuant to Paragraph 4 (a) of the Policy.
In its Reply to the Respondent’s
Response the Complainant has stated the following.
In
filing its Complaint against Respondent’s use of the <aiglawsuit.com>
domain name, Complainant is not attempting to deny Respondent a forum to
express her views concerning Complainant or any other party. Respondent has redirected the <aiglawsuit.com>
domain name to her <wallstreetfraud.com> domain name and website. As can be seen by Respondent’s own actions,
she is not using the <aiglawsuit.com> domain name to express her
views, but rather is using the domain name to redirect to another domain name
for her own commercial gain. Respondent
does not need to and is not entitled to use Complainant’s trademark in this way
and for such purposes.
Respondent
argues that confusion is unlikely because the <aiglawsuit.com>
domain name is not identical to or confusingly similar to Complainant’s
trademarks. Complainant disagrees. Confusion is likely to occur because the
domain name prominently features Complainant’s AIG trademark, and is used in
conjunction with the word “lawsuit” which is descriptive of some of
Complainant’s member companies’ lawsuit-related services, as described in the
Complaint. Consequently, Internet users
are likely to mistakenly believe that the <aiglawsuit.com> domain
name is affiliated with or sponsored by Complainant, when in fact it is not.
Complainant
objects to the claims made in the paragraph beginning at the bottom of Page 2
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 is more likely to demonstrate 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.
In
response to the Reply filed by the Complainant the Respondent has filed the
following Additional Submissions.
AIG has
committed fraud not alleged fraud. They have paid fines and have acknowledged
improprieties, which by any common mind would necessitate civil liability,
hence lawsuits meant to reimburse victims of impropriety are justifiable. For
example, should a brand of soup injure consumers by virtue of unsanitary
preparation which gave rise to botulism, the domain name
<X-brandsoupbotulism.com> would not be protected by copyright as that
instance had become newsworthy and the phrase <x-brandsoupbotulism.com>
was not taken out by the x-brand soup company. The linkage of the AIG trademark
and name with inappropriate activities, including fraud, are appropriately seen
in the news and in other media as they are newsworthy in the public domain. As
such, domain names linking the name and those facts are a reasonable extension
in any reasonable common mind. It simply borders on the absurd for AIG to claim
trademark infringement on any phrase, which combines the letters AIG with any
other verb, noun, adjective adverb or other word or set of words that exists in
the English language. Should a newspaper be prevented from running a
headline."...executive to plead guilty in AIG fraud; faces up to 5 years
in prison" because the AIG trademark is being used? As such, would a
website, <guiltyinAIGfraud.com> be prohibited? Is someone defrauded by AIG to be prevented from setting up a
website <AIGvictim.com> to provide facts online to warn others or to
provide facts in his or her case? In short the concept of shielding profitable
business entities who perpetrate deceptive or insincere or fraudulent
activities from media exposure on the internet utilizing domain names is highly
Orwellian and unjust and illegal in a court system.
In
response to the Complainant’s argument that the domain name was forwarded to a
separate site, please note that it was the complaint which locked the domain name
in terms of our access to it and that it was, in fact, to be a stand alone
site. While the website for <www.aiglawsuit.com> was being built,
a link was made to the <www.wallstreetfraud.com> site with a subsection
of that site devoted to AIG’s frauds and unscrupulous behaviors so that someone
typing in <www.aiglawsuit.com> would not see a sign indicating
that the name was sitting with the registrar. However, since we were locked out
of access to that domain name management system, it was not possible to have
that domain name used for the stand alone site. Instead
<www.aiglawsuits.com> was made into a stand alone site.
Regarding,
AIG claim that somehow there will be confusion, although AIG may hire lawyers
to defend their insurance purchasers, it is illogical that an insured would
somehow believe that <www.aiglawsuit.com> was devoted to defending
these individuals. If AIG had actually believed that the individuals they
insure needed direction as to what to do if they needed defense representation,
AIG would have purchased the webname <www.aiglawsuit.com> a long
time ago. The public mind would conclude by looking at the name <www.aiglawsuit.com>
that it is intended to assist the victims of AIG’s wrong doings to bring
lawsuits against AIG.
Regarding
AIG’s bad use claim, there never was any bad faith use of the name and
complainant’s use of this term represents highly circular reasoning as this has
not, nor can it ever be established. It is simply not bad faith to help victims
recoup their losses from a guilty party. It is bad faith to perpetrate fraud
via complex schemes and to price fix insurance policy rates.
In
conclusion, 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.
3. The domain name has been registered and
is being used in bad faith.
Complainant
has not proven each of the elements pursuant to Paragraph 4 (a) of the Policy.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant has shown that it is the
proprietor of numerous trademark registrations world wide for the AIG mark,
which demonstrate Complainant’s rights in the AIG mark for purposes of Policy
4(a)(i).
The
Panelist finds that the <aiglawsuit.com> domain name is
confusingly similar to Complainant’s AIG trademark, since Respondent’s domain
name incorporates Complainant’s AIG mark in its entirety, along with the
standard English word “lawsuit,” which, in accordance with the allegations of
the Complainant, is insufficient to alert Internet users that the <aiglawsuit.com>
domain name is not affiliated with or sponsored by Complainant. As stated by
the Complainant numerous ICANN 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 inter alia Reliv’ Int’l
Inc. v. Kelly, FA 96312 (Nat. Arb. Forum Feb. 5,
2001), in which the Panel held that the <relivlawsuits.com> domain name
was confusingly similar to the RELIV trademark, because the domain name merely
combined the trademark with the generic word “lawsuits,” even though Respondent
had linked the domain name to a website bringing attention to a lawsuit filed
against the complainant. See also a case concerning Complainant and Respondent,
Am. Int’l Group, Inc. v. Speyer, FA
422815 (Nat. Arb. Forum Apr. 7, 2005), in which the Panel found that the
<aigfraud.com> domain name was confusingly similar to Complainant’s AIG
mark, because the domain name fully incorporated the AIG mark and merely added
the descriptive term “fraud,” which describes a service offered by Complainant.
See also Am. Int’l Group, Inc. v.
Marques, FA 126832 (Nat. Arb. Forum Dec. 6,
2002) (finding that domain name <aigfinancial.net> was confusingly similar
to Complainant’s AIG mark, despite the addition of the descriptive term
“financial,” “based on the well-known status of Complainant’s mark throughout
the world” and in that “the term ‘financial’ is regularly associated with
Complainant”).
Thus, the Panel finds that the domain
name in question is confusingly similar to a trademark in which the Complainant
has rights under Policy ¶ 4(a)(i).
As
held by the Complainant the Panelist finds that the Complainant has prior rights
in the trademark AIG, which precede Respondent’s registration of the domain
name <aiglawsuit.com>. Respondent is not a licensee of
Complainant, and Respondent has not received permission or consent from
Complainant to use the trademark. It has not been shown that the Respondent has
been commonly known by the domain name.
The
fact that the Respondent admitted to having knowledge of Complainant and its
AIG trademark suggests no rights or legitimate interests on the part of the
Respondent and can serve as evidence of bad faith. See inter alia The Prudential Ins. Co. of Am. v. Stonybrook
Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (citing Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000)).
Complainant asserts that Respondent is
using the <aiglawsuit.com> 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). See inter alia Am.
Int’l Group, Inc. v. Speyer, FA 422815 (Nat. Arb. Forum Apr. 7, 2005)
(finding that “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)”).
Thus, the Panelist concludes that
Respondent has failed to demonstrate rights or legitimate interests in the
domain name under Policy ¶ 4(a)(ii).
According to the Complainant the
Respondent is using the <aiglawsuit.com> domain name for
commercial gain by redirecting Internet users interested in Complainant’s goods
or services to Respondent’s commercial website. As was found by the Panel in Am. Int’l Group, Inc. v. Speyer, FA
422815 (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 and to communicate with people familiar with
Complainant’s mark. Thus, in the Panelist’s opinion Respondent’s use of a domain
name that is confusingly similar to 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. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441
(WIPO July 13, 2000).
Furthermore, as has been mentioned above,
the fact that the Respondent admitted to having knowledge of Complainant and
its AIG trademark also suggests evidence of bad faith registration and use
pursuant to Policy 4(a)(iii). See
inter alia The Prudential Ins. Co. of
Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001)
(citing Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr.17, 2000)).
Thus, the Panelist finds that the domain
name at issue has been registered and used in bad faith 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 <aiglawsuit.com> domain name be TRANSFERRED from Respondent to
Complainant.
Jonas Gulliksson, Panelist
Dated: June 28, 2005
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