American Girl, LLC and American Girl Brand, LLC v. Ardent Development LLC c/o David Willard
Claim Number: FA0902001245602
Complainant is American
Girl, LLC and American Girl Brand,
LLC (“Complainant”), represented by Lori
S. Meddings, of Michael Best & Friedrich LLP, Wisconsin,
USA. Respondent is Ardent Development LLC c/o
David Willard (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <americangirlbrand.com>, registered with Name.com LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 3, 2009.
On February 2, 2009, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <americangirlbrand.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 2, 2009 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@americangirlbrand.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <americangirlbrand.com> domain name is confusingly similar to Complainant’s AMERICAN GIRL mark.
2. Respondent does not have any rights or legitimate interests in the <americangirlbrand.com> domain name.
3. Respondent registered and used the <americangirlbrand.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Girl, LLC and American Girl Brand, LLC, have operated under the AMERICAN GIRL trademark (and similar marks) since 1986 in marketing retail products including books, dolls, clothing, and other related accessories. Complainant has registered its marks with the United States Patent and Trademark Office (“USPTO”), including the AMERICAN GIRL mark (i.e. Reg. No. 2,125,919 issued December 30, 1997).
Respondent registered the <americangirlbrand.com> domain name on September 5, 2008. The disputed domain name resolves to a website that attempts to reproduce Complainant’s website using a similar color scheme, utilizes nonsensical language, and purports to offer Complainant’s goods for sale.
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.
The Panel finds that Complainant has successfully
demonstrated its rights in the mark under Policy ¶ 4(a)(i) by setting forth
evidence of its registration of the AMERICAN GIRL mark with the United States
Patent and Trademark Office (“USPTO”).
The <americangirlbrand.com> domain name contains Complainant’s AMERICAN GIRL mark while adding the word “brand” and the generic top-level domain “.com.” The addition of a generic top-level domain is irrelevant under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). Moreover, the addition of the generic word brand does not sufficiently differentiate the disputed domain name from the mark. Given that the end result of the addition, “american girl brand,” is the corporate name of Complainant, the word “brand” can be fairly said to describe Complainant. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The Panel notes that the WHOIS information lists Respondent
as “Ardent Development LLC c/o David Willard.”
Moreover, Complainant argues that Respondent is not permitted or
authorized to use Complainant’s mark.
Complainant asserts, and the Panel so finds, that Respondent is not nor
has ever been commonly known by the disputed domain names under Policy ¶
4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum
Feb. 5, 2001) (finding no rights or legitimate interests because the respondent
is not commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see
also Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb.
Forum Sept. 25, 2003) (finding that without demonstrable evidence to support
the assertion that a respondent is commonly known by a domain name, the
assertion must be rejected).
Respondent’s disputed domain name
resolves to a website that mimics Complainant’s website, and purports to offer
Complainant’s goods using nonsensical and irrational language. The Panel finds that Respondent is passing
itself off as Complainant in order to engage in an unauthorized, as Complainant
contends, sale of Complainant’s products.
This does not qualify as 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
Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000)
(finding that domain names used to sell the complainant’s goods without the
complainant’s authority, as well as others’ goods, is not bona fide
use); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s
attempt to pass itself off as the complainant by implementing a color scheme
identical to the complainant’s was evidence that respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
It is not difficult to decipher the disruptive impact that
Respondent’s commercial activity has on Complainant’s business vis-à-vis the
disputed domain name. Respondent is
engaging in an unauthorized sale of Complainant’s products by diverting
Internet users to this competitive website.
Respondent has therefore engaged in bad faith registration and use under
Policy ¶ 4(b)(iii). See G.D. Searle & Co. v.
Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)
(“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525
(Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com>
domain name from the respondent, a watch dealer not otherwise authorized to
sell the complainant’s goods, to the complainant).
Moreover, Respondent has created a likelihood of confusion
as to the source and endorsement by Complainant of the disputed domain name and
corresponding website. By using a
similar color scheme and copying portions of Complainant’s website, Respondent
has attempted to pass itself off as Complainant through this confusion to
commercially gain by selling Complainant’s products in an unauthorized
form. The Panel finds that Respondent
has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See AT&T Corp. v. RealTime
Internet.com Inc., D2001-1487 (WIPO May 1,
2002) (“[U]se of domain names to sell Complainant’s goods and services without
Complainant's authority . . . is bad faith use of a confusingly similar domain
name.”); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA
109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the
<compaq-broker.com> domain name to sell the complainant’s products
“creates a likelihood of confusion with Complainant's COMPAQ mark as to the
source, sponsorship, or affiliation of the website and constituted bad faith
pursuant to Policy ¶ 4(b)(iv)”).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <americangirlbrand.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 19, 2009
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