DECISION

American International Group, Inc. v. Allen I. Gossvan Trust

Claim Number: FA0405000274122

PARTIES

Complainant is American International Group, Inc. (“Complainant”), represented by Claudia Stangle, Two Prudential Plaza, Suite 4900, Chicago, IL 60601.  Respondent is Allen I. Gossvan Trust (“Respondent”), represented by William Foster of Paige, Carrington, Genevieve & McCloud, MeridianGlobal Center, One Park Plaza, Sixth Floor, Irvine, CA 92614.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <aigcapitalgroup.com> and <aigfinancialgroup.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

P-E H Petter Rindforth as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2004; the Forum received a hard copy of the Complaint on May 21, 2004.

On May 21, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <aigcapitalgroup.com> and <aigfinancialgroup.com> are 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 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 16, 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@aigcapitalgroup.com and postmaster@aigfinancialgroup.com by e-mail.

A timely Response was received and determined to be complete on June 16, 2004.

On June 21, 2004, a timely Additional Submission was received from Complainant. As this Additional Submission complies with the Forum’s Supplemental Rule 7, it will be considered by the Panel.

On June 28, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. P-E H Petter Rindforth as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <aigcapitalgroup.com> and <aigfinancialgroup.com> domain names are confusingly similar to Complainant’s AIG mark.

2. Respondent does not have any rights or legitimate interests in the <aigcapitalgroup.com> and <aigfinancialgroup.com> domain names.

3. Respondent has registered and used the domain names <aigcapitalgroup.com> and <aigfinancialgroup.com> in bad faith.

B. Respondent makes the following assertions:

Respondent states that the letters AIG of the disputed domain names refer to initials of the name of Mr. Allen I. Gossvan, the founder of the Allen I. Gossvan Trust and that there is no identicalness or confusingly similarity between the domain names and the Complainant’s mark AIG.

Respondent further states that among the trusts formed by Mr. Allen I. Gossvan are AIGCapitalGroup and AIGFinancialGroup, both formed in 1964. Respondent therefore has rights and legitimate interests in the domain names <aigcapitalgroup.com> and         <aigfinancialgroup.com>.  Respondent denies having registered and used the <aigcapitalgroup.com> and <aigfinancialgroup.com> domain names in bad faith.

C. Complainant’s Additional Submission

Complainant submitted an Additional Submission, mainly informing on Complainant’s efforts to communicate in writing with Respondent as well as efforts to seek information on Respondent and the related trusts.  Complainant states that Respondent has provided no objective proof of legitimate interests or rights in the disputed domain names.

FINDINGS

Complainant, American International Group, is a leading international insurance and financial services organization, with operations in approximately 130 countries and jurisdictions. Complainant’s revenues in 2003 were over $81 billion.  The AIG mark is an acronym for Complainant’s company name and registered as a trademark for insurance and financial services in a great number of countries, including U.S. Registration No. 1,151,229 “AIG” (registered April 14, 1981) and No. B12121/1999 “AIG” (registered in Hong Kong January 14, 1997), as shown by Exhibit A of the Complaint (including a list of approx. 600 AIG marks owned by the Complainant). Complainant also owns trademark registrations including the words “Capital” and “Financial”, such as U.S. Reg. No. 2,509,860 “AIG HIGHSTAR CAPITAL” and U.S. Reg. No. 2,048,525 “AIG WORLD LEADERS IN INSURANCE & FINANCIAL”.

Complainant is also the owner of several member companies that use “AIG” and “Financial” or “Capital” e.g., “AIG Financial Advisor Services, Inc.,” “AIG Capital Management Corp.,” “AIG Capital Partners,” and “Advantage Capital Corporation.”

Complainant has used the mark AIG continuously since at least 1968 and invested extensively in the goodwill associated with AIG. Complainant has spent considerable time and money advertising Complainant’s member companies’ goods and services offered in connection with the “AIG” mark by extensively using the mark “AIG” on material, including but not limited to, print advertisements, product brochures, radio advertisements, television commercials, and its web sites at <aig.com> among others.

In 2003 alone, Complainant advertised its AIG mark and brand name in connection with a number of sport and cultural events, such as the NCAA basketball tournament, the Academy Awards, the Triple Crown Horse races, the NBA playoffs, the season finale of Survivor, the French and U.S. Open tennis events, U.S. Open Golf tournament, NFL football games, 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, as well as in news publications such as The New York Times, Fortune and Time.

All the above statements of the Complainant are supported by documentations provided as Exhibits A – B of the Complaint.

Respondent, Allen I. Gossvan Trust, asserts that it is a private family trust formed by Allen I. Gossvan in 1964 and that it has operations in several countries and jurisdictions. AIG are the initials of the founder and used for several trusts formed by Mr. Gossvan in 1964, such as AIG Trust, AIGCapitalGroup and AIGFinancialGroup.

Respondent’s entities AIGCapitalGroup and AIGFinancialGroup make investments for their own respective accounts and do not offer either “insurance services” or “financial services”.

Respondent registered the disputed domain names <aigcapitalgroup.com> and            <aigfinancialgroup.com> on April 1, 2004.

On April 8, 2004, Complainant sent a message via e-mail to Meridian Global (the registered owners of the domain names at that time), asking for clarification of the purpose of the two registrations and offering Meridian Global $100 in exchange for the assignment of each of the domain names to the Complainant. The Respondent responded the same day, informing that “AIG” are the initials of Allen I. Gossvan, as well as of the owner’s primary entity AlliedInvestmentGroup. Respondent also declined to sell the domain names to Complainant, referencing that <aigcapitalgroup.com> and            <aigfinancialgroup.com> are related to Respondent’s personal business.

On April 22, 2004, Complainant wrote to Respondent, repeating its statements of April 8, 2004 and asking for proof of Mr. Gossvan’s use of AlliedInvestmentGroup as well as further information about the services offered by Mr. Gossvan and the AlliedInvestmentGroup. The letter returned as undeliverable.

On April 30, 2004, Complainant sent a copy of the abovementioned letter to Respondent (acting as Meridian Global) via e-mail and received a reply on May 3, 2004. The reply was signed by Mr. Hugh Tucker of Allen I. Gossvan Trust and informed that Allen I. Gossvan has done business through the related trusts AIGFinancialGroup and AIGCapitalGroup since 1964. The Respondent offered to sell Complainant the disputed domain names for $75,000 each, claiming that the amount represented the costs and expenses estimated to be incurred by Respondent in changing its business to operate without the use of the domain names.

Complainant has thereafter, as stated in both the Complaint and in the Complainant’s Additional Submission, made several investigations in order to find information on the existence of the Respondent and its related trusts, as well as asked Respondent for further proof in this respect.

DISCUSSION

Paragraph 15(a) of the Rules for the 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

Complainant asserts that it has established rights in the AIG mark through its numerous trademark registrations around the world including the United States and Hong Kong.  See 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 argues that Respondent’s <aigcapitalgroup.com> and <aigfinancialgroup.com> domain names are confusingly similar to Complainant’s AIG mark, because the domain names fully incorporate Complainant’s mark, adding only generic terms that describe Complainant’s business.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

The Panel finds that AIG is a well-known and registered trademark in the name of Complainant and that the disputed domain names consist of the AIG mark followed by the descriptive terms “capital group” and “financial group”. As the Complainant is known and associated worldwide in the field of financial services, the addition of “capital group” and “financial group” only further implies that there is an association with the owner of the trademark AIG. The domain names <aigcapitalgroup.com> and <aigfinancialgroup.com> are therefore confusingly similar to Complainant’s trademark AIG.

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

Rights or Legitimate Interests

Respondent argues that it is commonly known by the <aigcapitalgroup.com> and <aigfinancialgroup.com> domain names, because Respondent is a trust named after Allen I. Gossvan and has often used Mr. Gossvan’s initials to refer to Respondent’s entities “AIGCapitalGroup” and “AIGFinancialGroup” since at least 1964.  Furthermore, Respondent asserts that it is not abnormal that any search for Respondent or its trust entities would find no references due to the extremely private nature of Mr. Gossvan and his trusts. None of the disputed domain names resolves to any active web sites, however the Declaration of Mr. Gossvan (provided as Exhibit 1 of the Response) asserts that he intends to use <aigcapitalgroup.com> and <aigfinancialgroup.com> to communicate with those with whom he invests.

Complainant, on the other hand, argues that its searches for Respondent’s alleged trust entities did not produce any references to Respondent or Respondent’s entities.  Furthermore, Complainant asserts that Respondent has made no showing that it is commonly known by the disputed domain names, because it has made no attempt to produce letterhead, copies of letters, or any other evidence that it has been conducting business under Mr. Gossvan’s initials. 

In this respect, the Panel notes the following:

i) The Complainant has asked the Respondent several times to produce any documentation of its use of AIG, AIGCapitalGroup and/or AIGFinancialGroup. These requests have been made in communication to Respondent prior to these proceedings, within the Complaint as well as in the Complainant’s Additional Submission.

ii) The Respondent has not provided any such documentation, but only referred to its “extensive” use since 1964. It is to be noted that, according to the Forum’s Supplemental Rule #7, the Respondent had the opportunity to respond to the Complainant’s Additional Submission within five calendar days, but chose not to do so.

iii) The only supporting document to the Response is the written Declaration of Mr. Allen I. Gossvan. The said Declaration does not provide any further information, apart from what is already stated in the Response itself, and it is obviously not signed by the hand of Mr. Gossvan but “signed” using a standard font.

The Respondent’s failure to produce any proof whatsoever of its alleged use of AIG, AIGCapitalGroup and/or AIGFinancialGroup during 40 years, together with the Complainant’s statements that it has been unable to trace any references to Mr. Gossvan’s person, business and/or business names, leads the Panel to question whether Respondent’s trust exists at all. If, as stated by Respondent in its e-mail of May 3, 2004 to Respondent, Allen I. Gossvan Trust has done business since 1964, there should be at least some business cards, letterheads and/or banking documentation to show, even if the business has been of a “very private nature” (as stated in the Response).

In any case, it cannot be said that Respondent is commonly known by the disputed domain names.  See 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).

Further, the Respondent has failed to produce any evidence that it has any rights or legitimate interests in the domain names <aigcapitalgroup.com> and <aigfinancialgroup.com>.

Respondent made no showing of demonstrable preparations to use the disputed domain names.  There is a mention of “business plans already underway for the implementation of these URL’s” in the Respondent’s e-mail of May 3, 2004, but no documents have been provided to show the existence of such business plans.

Respondent offered the domain name registrations for sale to Complainant in the amount of $75,000 each.  The Panel finds that Respondent’s failure to make demonstrable preparations to use and willingness to sell the domain name registrations do 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).  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’”).

It is also to be noted that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain names, the burden shifts to the Respondent to establish such rights.

The Panel finds that Respondent has no rights or legitimate interests in any of the disputed domain names; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

As shown in both the Complaint and the Response, Respondent offered to sell the domain name registrations to Complainant for the amount of $75,000 each. As understood by the Panel, the amount reflects the value of Respondent’s alleged 40 years use of the name of the trusts. However, the Respondent has provided no evidence of the existence of any trusts corresponding to the domain names <aigcapitalgroup.com> and <aigfinancialgroup.com>.  Respondent has also failed to provide any business plans for the disputed domain names. The Panel therefore concludes that Respondent registered the domain names solely for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant for an amount that is in excess of Respondent’s out-of-pocket costs.  See World Wrestling Fed’n Entmt., Inc. v. Bosman, D1999-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).

The only demonstrable “use” of the domain names is, in fact, use as assets that can be offered to the Complainant for a large amount of money. Such use is within the scope of Policy ¶ 4(b), indicating use in bad faith.

Complainant argues that Respondent registered the disputed domain names with actual or constructive knowledge of Complainant’s use of the AIG mark, and Respondent does not dispute having had such knowledge.  However, Respondent asserts that it registered the domain names believing that it was in no way infringing upon Complainant’s rights in its AIG mark, since the “aig” in the domain names had been used to refer to Respondent’s founder since 1964.  Once again, as Respondent has provided no evidence of such use, the Panel finds it more likely that Respondent registered the domain names rather with the Complainant in mind.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <aigcapitalgroup.com> and <aigfinancialgroup.com> domain names be TRANSFERRED from Respondent to Complainant.

P-E H Petter Rindforth, Panelist
Dated: July 9, 2004

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