American Eagle Outfitters, Inc. and
Retail Royalty Company v. Tony Leung a/k/a Kam Vam
Claim Number: FA0206000114647
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@americaneagleoutfitters.com 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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