DECISION

America International Group, Inc. v. Rod Dobson

Claim Number: FA0302000146568

PARTIES

The Complainant is America International Group, Inc., New York, NY (“Complainant”).  Respondent is Rod Dobson, Columbia, SC (“Respondent”).

           

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theretirementspecialist.com>, registered with Dotster.

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.

            Judge Richard B. Wickersham (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 20, 2003; the Forum received a hard copy of the Complaint on February 21, 2003.

On February 25, 2003, Dotster confirmed by e-mail to the Forum that the domain name <theretirementspecialist.com> is registered with Dotster and that the Respondent is the current registrant of the name.  Dotster  has verified that Respondent is bound by the Dotster 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 25, 2003,  a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 17, 2003 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@theretirementspecialist.com by e-mail.

A timely Response was received and determined to be complete on March 17, 2003.

            Complainant’s additional submission was timely received on March 21, 2003.

On March 25, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from Respondent to Complainant.

           

PARTIES’ CONTENTIONS

A.   Complainant

            The Complainant bases the Complaint on its use since September 1997 of the mark and slogan “THE RETIREMENT SPECIALIST” and the use by a predecessor of the registered mark “AMERICA’S RETIREMENT PLAN SPECIALISTS” since 1990.  Complainant’s “THE RETIREMENT SPECIALIST” mark and slogan has been extensively advertised and promoted throughout the world through many media forms.

B.   Respondent

Respondent contends that this is a common law mark.  Common law indicates extended use and, given the descriptive nature of “THE RETIREMENT SPECIALIST,” it must also achieve secondary meaning.  AIG SunAmerica has not accomplished that, i.e., established secondary meaning.

            C.  Complainant’s Additional Submission

Complainant submitted an Additional Submission, which Panel considered clarifying assertions that Complainant is currently “in the appeals process,” or that its application had been denied registration, or that Complainant has lost its bid for trademark registration regarding its “THE RETIREMENT SPECIALIST” mark.

FINDINGS

1. The Panel finds that the domain name www.theretirementspecialist.com is identical or confusingly similar to Complainant’s THE RETIREMENT SPECIALIST mark.   Panel finds that continuously since at least as early as September 1997, Complainant and its member company AIG SunAmerica, Inc., and its affiliated companies have used the mark “THE RETIREMENT SPECIALIST” in connection with its famous SunAmerica marks, duly registered to distinguish its insurance, financial and retirement services from those offered by others.

2. The Panel finds that Complainant’s mark “THE RETIREMENT SPECIALIST” has earned very valuable goodwill and is well known worldwide.

3. The Panel finds that on February 22, 2000, Respondent reserved the domain name www.theretirementspecialist.com long after Complainant had been advertising for and providing services incorporating “THE RETIREMENT SPECIALIST.” The Panel finds the website does not appear to be used in connection with providing actual services.

4. The Panel finds that Respondent offered to sell the disputed domain for shares of Complainant’s stock valued at around one hundred thousand ($100,000.00) dollars.

5. The Panel finds that Respondent should not be considered as having rights or a legitimate interest in the domain name.

6. The Panel finds that the domain name should be considered as having been registered and used in bad faith.

7. The Panel finds that the request of Complainant that the domain name registration be transferred to American International Group, Inc., should be GRANTED.

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 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.

           

            Identical and/or Confusingly Similar Policy ¶ 4(a)(i).

Complainant asserts rights in the THE RETIREMENT SPECIALIST mark, based on its registration of the mark with the U.S. Patent and Trademark Office (“USPTO”) (Ser. No. 76/413246).  Although Complainant’s THE RETIREMENT SPECIALIST registration was filed on May 23, 2002, Complainant maintains that it has offered services under the mark since September 1997.  Additionally, Complainant claims rights in the AMERICA’S RETIREMENT PLAN SPECIALISTS mark based on its predecessor-in-interest’s use of the mark.  Panel so finds.

Although Respondent’s domain name was registered on February 22, 2000, before any trademark registration or application for the THE RETIREMENT SPECIALIST mark by Complainant, the Panel determines that Complainant has adequately demonstrated rights in the mark based on extensive use of the mark in commerce.  Complainant’s submission outlines its extensive use of the THE RETIREMENT SPECIALIST mark, which includes significant advertising and promotional efforts aimed at bolstering consumer recognition of the mark.  McCarthy on Trademarks and Unfair Competition, §25:74.2, Vol. 4 (2000) (The ICANN dispute resolution policy is “broad in scope” in that ‘the reference to a trademark or service mark in which the complainant has rights’ means that ownership of a registered mark is not required-unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also 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 Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).   Panel so finds.

Complainant asserts that Respondent’s <theretirementspecialist.com> domain name is identical to Complaint’s THE RETIREMENT SPECIALIST mark.  See 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); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d1135, 1146 (9^th Cir. Feb. 11, 2002) (Internet users searching for a company’s [w]ebsite. . . .assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).  Panel agrees.

(Additional Submission) Complainant denies Respondent’s accusations that Complainant’s THE RETIREMENT SPECIALIST mark was “refused” registration in 1997.  Complainant states that it filed a USPTO application on March 25, 1997 for the mark but voluntarily abandoned prosecution of the mark.  Complainant argues that after five years of use of the mark it again filed a trademark application, which Respondent incorrectly classifies as constituting an “appeal process.”  However, Complainant’s additional submission does indicate that its trademark application was issued an “initial refusal” based on descriptiveness.

Complainant asserts that its use of THE RETIREMENT SPECIALIST is distinguishable from Respondent’s examples of others’ use of the phrase (T. Rowe Price and Vanguard financial groups) because its use of the mark designates a specific and distinct claim, namely, that Complainant is “THE” preeminent retirement specialist.  Panel so finds.

            Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

            Rights or Legitimate Interests   Policy ¶ 4(a)(ii).

Complainant asserts that Respondent should not be considered as having rights or legitimate interest in the subject domain name because Respondent is not licensed or authorized to make use of Complainant’s mark.  Further, Complainant states that it has established prior rights in a mark that Respondent is infringing.   See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).  Panel agrees.

Complainant argues that Respondent is not currently offering any goods or services in connection with the domain name.  Complainant states, “Respondent initially had four supposed topics on his web site . . . However, when one chose any of those topics, the link brought the user, in most cases, to a page where it said ‘[s]ome text can go here for an overview of what the articles listed contain.’”  Complainant alleges that Respondent’s links do not work.  Complainant charges that Respondent’s lack of purpose or development of the domain name suggests that Respondents lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See 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’”); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent had not used the domain names in connection with any type of bona fide offering of goods and services).  Panel concurs.

Complainant alleges that Respondent conducts business under the name “Capital Financial Alliance, Inc.,” which permits the inference that Respondent is not commonly known by the subject domain name under Policy ¶ 4(c)(ii).   See Tercent nc. 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).  Panel agrees.

Complaint asserts that since August 2000, Respondent has sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of Complainant’s stock.  The Panel finds that Respondent’s alleged offer to sell the domain name registration indicates that Respondent lacks rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).   See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain name registrations for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name registration suggests it has no legitimate use).    Panel agrees.

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Complainant asserts that Respondent had constructive and actual knowledge of Complainant’s rights in the THE RETIREMENT SPECIALIST mark prior to registering the infringing domain name.  Because Respondent knowingly disregarded another’s rights, Complainant argues that Respondent registered the domain name in bad faith under 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, [2002] USCA9 115; 279 F.3d 1135, 1148 (9^th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”); see also Samsonite Corp. v. Colony Holdings, FA 94313 (Nat. Arb. Forum Aprl 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).  Panel agrees.

As stated, Complainant alleges that Respondent attempted to sell the domain name registration to Complainant in return for a substantial amount of stock (1,500 shares valued at around $100,000 at the time the offer was made).  Such conduct, Complainant argues, evidences bad faith registration and use under Policy ¶ 4(b)(i).   See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (“[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner”); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000").   Panel agrees.

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED. 

Accordingly, it is Ordered that the <theretirementspecialist.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                                       

HON. RICHARD B. WICKERSHAM, (Ret. , Panelist

Dated: April 8, 2003