American Girl, LLC v. BWI Domain Manager
Claim Number: FA0710001104431
Complainant is American Girl, LLC (“Complainant”), represented by Lori
S. Meddings, of Michael Best & Friedrich LLP, 100
East Wisconsin Avenue, Milwaukee, WI 53202. Respondent is BWI Domain Manager (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <americangir.com>, registered with Rebel.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 31, 2007.
On October 31, 2007, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <americangir.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 November 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 3, 2007 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@americangir.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americangir.com> domain name is confusingly similar to Complainant’s AMERICAN GIRL mark.
2. Respondent does not have any rights or legitimate interests in the <americangir.com> domain name.
3. Respondent registered and used the <americangir.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Girl, LLC, markets, distributes, and retails a famous line of products including fictional books, dolls, accessories, and clothing for girls. Complainant registered the AMERICAN GIRL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,407,37 issued November 21, 2000). Complainant registered the <americangirl.com> domain name to use with its business plan. It is intended for young girls and their parents.
Respondent registered the <americangir.com> domain name on November 20, 2005. The domain name resolves to a webpage containing third-party links which sends the Internet user to sites containing adult-oriented content.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant registered the AMERICAN GIRL mark with the
USPTO, and therefore, established rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum
Complainant claims that the <americangir.com> domain name is confusingly similar to
the AMERICAN GIRL mark. Respondent’s
domain name includes the dominant portions of Complainant’s AMERICAN GIRL mark
and omits the letter “l” and adds the generic top-level domain “.com”. Such alterations to Complainant’s mark are insufficient
to distinguish the disputed domain name from Complainant’s mark. Thus, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See
Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO
Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s
UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark
and thus made the disputed domain name confusingly similar to it); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use
of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii),
Complainant must initially state a prima
facie case that Respondent has no rights or legitimate interests in the disputed
domain name. See VeriSign Inc. Vene Sign,
Respondent has failed to submit a response to the Complaint. The Panel presumes that Respondent has no rights or legitimate interests in the <americangir.com> domain name, but will still consider all available evidence pursuant to Policy ¶ 4(c) before making this determination. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Nowhere in Respondent’s WHOIS information does it indicate that Respondent is commonly known by the <americangir.com> domain name. There is no other information to indicate that Respondent is or ever has been commonly known by the disputed domain name. Further, Complainant has not granted a license or permission to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The disputed domain name resolves to a links page. Upon
clicking these links the user is redirected to adult-oriented websites. The Panel finds that this is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the disputed domain names pursuant to Policy ¶
4(c)(iii). See
Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002)
(holding that the use of a domain name that is confusingly similar to an
established mark to divert Internet users to an adult-oriented website
“tarnishes Complainant’s mark and does not evidence noncommercial or fair use
of the domain name by a respondent”); see
also Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to
pornography is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and
(iii).”).
The Panel also finds that
Respondent’s <americangir.com> domain name is a simple
misspelling of the AMERICAN GIRL mark. This form of typosquatting indicates
that Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate
interests in the disputed domain names because it “engaged in the practice
of typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that
the <ltdcommadities.com>, <ltdcommmodities.com>, and
<ltdcommodaties.com> domain names were intentional misspellings of
Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that
Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panels concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <americangir.com> domain name is a classic
example of typosquatting and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting … is the intentional misspelling of words with [the]
intent to intercept and siphon off traffic from its intended destination, by
preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”); see also Dermalogica, Inc.
v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com>
domain name was a “simple misspelling” of the complainant's DERMALOGICA
mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶
(a)(iii)).
The disputed domain name links to adult-oriented websites. The Panel finds that this constitutes bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003)
(“[W]hatever the motivation of Respondent, the diversion of the domain name to
a pornographic site is itself certainly consistent with the finding that the
Domain Name was registered and is being used in bad faith.”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat.
Arb. Forum Mar. 18, 2003) (finding that the
respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith).
The <americangir.com> domain name is confusingly
similar to Complainant’s AMERICAN GIRL mark and resolves to a website that displays links which
lead to adult-oriented websites. The
Panel assumes that Respondent is financially benefitting from click-through
fees. The Panel finds this as evidence
of Respondent’s bad faith registration and use of the disputed domain name
pursuant to Policy ¶ 4(b)(iv). See
Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL,
D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers
rely on misleading domain names to attract users by confusion, in order to
generate revenue from click-through advertising, mouse-trapping, and other
pernicious online marketing techniques.”); see
also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum
The Panels concludes that Complainant has satisfied 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 <americangir.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 14, 2007
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