American International Group, Inc. v. Debra Speyer
Claim Number: FA0502000422815
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.
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).
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).
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)).
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
Dated: Monday, April 7, 2005