American Eagle Outfitters, Inc. and Retail Royalty Company v. Tony Leung a/k/a Kam Vam
Claim Number: FA0206000114647
Complainants are American Eagle Outfitters, Inc. and Retail Royalty Company, Warrendale, PA, USA (hereinafter collectively, “Complainant”) represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP. Respondent is Tony Leung a/k/a Kam Vam, Xiamen, Fujian, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneagleoutfitters.com>, registered with Iholdings.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 19, 2002; the Forum received a hard copy of the Complaint on June 24, 2002.
On June 20, 2002, Iholdings.com confirmed by e-mail to the Forum that the domain name <americaneagleoutfitters.com> is registered with Iholdings.com and that Respondent is the current registrant of the name. Iholdings.com has verified that Respondent is bound by the Iholdings.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 July 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 2002 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.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 allegations in this proceeding:
The <americaneagleoutfitters.com> domain name is identical to Complainant's AMERICAN EAGLE OUTFITTERS mark. Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered and used the disputed domain name in bad faith.
B. Respondent failed to submit a Response.
Complainant owns numerous registrations on the Principal Register of the United States Patent and Trademark Office for its AMERICAN EAGLE OUTFITTERS mark. These include those set out below:
Mark Reg. No./ Ser. No. Goods/Services
AMERICAN EAGLE OUTFITTERS 2393861 Perfume, in IC-3
AMERICAN EAGLE OUTFITTERS 2344282 Hair and body shampoo; soap; soap on a rope; moisturizing body lotion; bath salts; and shower gel, in IC-3; Candles, in IC-4
AMERICAN EAGLE OUTFITTERS 1893331 Credit card services, in IC-36
AMERICAN EAGLE OUTFITTERS 2050115 Footwear, slippers, leather and rubber boots and insoles, in IC-25
AMERICAN EAGLE OUTFITTERS 1921343 Leather care products, namely, cork and leather sealants and preservatives, in IC-2; Waterproofing chemical compositions for leather, in IC-1; and Conditioners for leathers, in IC-3
AMERICAN EAGLE OUTFITTERS 1916360 Jewelry, namely, necklaces, earrings, and wristwatches, in IC-14
AMERICAN EAGLE OUTFITTERS 2191681 Nonprescription sunglasses sold only through American Eagle Outfitters retail clothing and footwear stores of applicant or its licensee
AMERICAN EAGLE OUTFITTERS 2086693 Clothing, namely, outerwear; namely, coats, vests, parkas, and anoraks, pants, jeans, shorts, sweaters, shirts, underwear, neckwear, headwear, belts, hosiery, skirts, jackets, blazers, footwear, fleecewear; namely, fleece sweatshirts and fleece jackets, in IC-25
AMERICAN EAGLE OUTFITTERS 1597199 Compasses and portable personal thermometers for measuring environmental temperature, in IC-9; Travel diaries, in IC-16; Flashlights, in IC-11
AMERICAN EAGLE OUTFITTERS 75/734057 Audio apparatus, namely, MP3 audio tape players, in IC-9; Bicycles, in IC-12; and Toys and sporting goods, namely, snowboards, surfboards, skateboards, yo-yos, and throwable disc shaped toy projectiles, in IC-28.
Complainant also registered its mark in numerous countries throughout the world, including Mexico, Singapore, Japan, Colombia, Malaysia, China, South Korea, Philippines, Indonesia, Taiwan, Brazil, Hong Kong, Chile, Ecuador, Panama, Paraguay, Sri Lanka, Nicaragua, El Salvador, Uruguay, Venezuela, Saudi Arabia, Kuwait, Russian Federation, New Zealand, Israel, Canada, India, Cambodia, Nepal, Honduras, and Pakistan.
Complainant uses its mark extensively in relation to retail services and Complainant currently operates a website selling its goods as <ae.com>. Complainant has used its AMERICAN EAGLE OUTFITTERS mark continuously since 1977 and is known internationally. In 2002, Complainant’s sales of AMERICAN EAGLE OUTFITTERS branded goods were in excess of one billion dollars.
Respondent registered the <americaneagleoutfitters.com> domain name on February 20, 2002. Respondent is not licensed by Complainant to use the AMERICAN EAGLE OUTFITTERS mark. Respondent is using the disputed domain name in order to divert Internet traffic to <sqrl.com>. The <sqrl.com> domain name offers links to various vendors some of which compete with Complainant in selling the same type of merchandise.
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 to draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 Respondent is identical to 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.
Identical to and/or Confusingly Similar
Complainant has established that it has rights in the AMERICAN EAGLE OUTFITTERS mark through registration and continuous use. Furthermore, the domain name registered by Respondent, <americaneagleoutfitters.com>, is identical to Complainant’s mark because omission of spaces and the addition of a generic top-level domain name are not considered to be characteristics capable of creating a distinct mark. Therefore, when considering whether a domain name is identical, neither the omission of spaces nor the addition of a generic top-level domain name are relevant. 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 Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent did not come forward with a Response and therefore the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See 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”).
Respondent is using a domain name that is identical to Complainant’s well-known AMERICAN EAGLE OUTFITTERS mark and is using it to divert Internet traffic that is interested in Complainant’s products to Respondent’s website located at <sqrl.com>. By using Complainant’s trademark to divert Internet traffic, Respondent is infringing upon Complainant’s goodwill. Respondent is not using the disputed domain name in relation to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not putting it to a legitimate noncommercial use pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also 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 the Complainant’s mark by redirecting Internet traffic to its own website).
No evidence on record suggests that Respondent is known commonly as AMERICAN EAGLE OUTFITTERS or <americaneagleoutfitters.com> and Respondent has not come forward to offer such proof. As a result, the Panel knows Respondent only as “Tony Leung” and “Kam Vam.” Respondent has failed to establish rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). 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); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on the famous nature of Complainant’s mark and the fact that Complainant holds numerous international registrations in countries that include China, Respondent’s place of domicile, the Panel may infer that Respondent had actual and constructive notice of Complainant’s rights in the AMERICAN EAGLE OUTFITTERS mark when it registered the disputed domain name. Respondent’s registration despite this notice of a domain name containing Complainant’s mark <americaneagleoutfitters.com> is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th 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 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Respondent is using a domain name identical to Complainant’s mark in order to divert Internet traffic to its own website located at <sqrl.com>. This website offers links to vendors that sell various types of merchandise. It can be inferred that Respondent is making a profit by featuring these vendors on its website and encouraging Internet traffic to visit these websites. Respondent is therefore profiting from confusion created by Respondent’s use of Complainant’s mark in the <americaneagleoutfitters.com> domain name. This is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).
Respondent’s website features vendors that sell merchandise that competes with Complainant’s merchandise. The use of Complainant’s trademark in order to attract Internet users to a website that competes with Complainant is considered to be bad faith use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain name <americaneagleoutfitters.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 14, 2002.
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