American Girl, LLC and American Girl Brands, LLC v. Prathed Sangwongvanit
Claim Number: FA0906001270622
PARTIES
Complainant is American Girl, LLC and American
Girl Brands, LLC (“Complainant”),
represented by Lori S. Meddings, of Michael Best & Friedrich LLP,
Wisconsin, USA. Respondent is Prathed
Sangwongvanit (“Respondent”),
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <americangirldoll.us>, registered with Name.com.
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2009.
On June 29, 2009, Name.com confirmed by e-mail to the National Arbitration Forum that the <americangirldoll.us> domain name is registered with Name.com and that the Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 20, 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@americangirldoll.us by e-mail.
An e-mail of the Response was
received on July 6, 2009, but because the
hard copy was submitted only after the Response deadline, the Response was
determined to be deficient because it is not in compliance with Rule 5. Despite said deficiency, the Panel shall
consider the Response because the Panel believes to do otherwise based on a
technical rule violation would be inconsistent with the basic principles of due
process. See American International Group, Inc. v. Debra Speyer, FA 481752
(Nat. Arb. Forum June 28, 2005); see also
William E. Strum v. Nordic Net
On
July 14, 2009, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant owns more than 100 valid United States Patent and Trademark Office (“USPTO”) registrations for the mark, AMERICAN GIRL, by itself or in combination with other words.
- Complainant has used its marks since 1986 to market various distinctive dolls, as well as a variety of accessories and ancillary products related to those dolls. For instance, between 2000 and 2006, Complainant spent in excess of $313.8 million dollars to promote and advertise the products sold under its AMERICAN GIRL marks.
- Complainant receives a massive amount of publicity through the media with respect to its merchandise and trademarks. As a result, Complainant’s trademarks have become famous.
- Complainant also owns the domain name, <americangirl.com>, through which it facilitates sales of its dolls and involvement with doll-related activities.
- Respondent owns the disputed domain name, <americangirldoll.us>. That name is confusingly similar to Complainant’s trademark. The addition of the word “doll” does not distinguish the name from the mark, particularly because “doll” is the generic word that best describes Complainant’s core product line. The addition of the country code top level domain name, “.us,” is also irrelevant as a distinguishing feature.
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not consented to Respondent’s use of the name. Respondent fails to use the domain name in question as a bona fide offering of goods or services, since the name is used only for linkage to third party websites – presumably to earn click-through fees – some of which compete directly with Complainant’s business. Moreover, there is no evidence that Respondent owns any enterprise which bears a likeness to the disputed domain name. Finally, Respondent’s use of the disputed domain name does not constitute noncommercial or fair use.
- Respondent’s use of the disputed domain name is likely to tarnish the reputation and good will associated with Complainant’s trademark. Such use also dilutes the distinctiveness of the mark.
- The domain name at issue was registered and is being used in bad faith. Respondent uses the name to attract, for commercial gain, Internet users to its website by the likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Respondent knows, or should have known, of Complainant’s earlier mark and that internet users, looking for Complainant’s wares, would likely encounter Respondent’s non-affiliated website.
- The fact that the disputed domain name incorporates in full Complainant’s valid trademark is sufficient evidence for a finding of bad faith.
B. Respondent
- Respondent did not intend to infringe upon Complainant’s rights.
- In any event, traffic drawn to Respondent’s website through the disputed domain name should also benefit Complainant, in a “win-win” situation.
FINDINGS
Complainant is a well-established American company which has sold a line of distinctive dolls along with various accessories and related products since 1986. Complainant possesses many valid USPTO registrations for its trademark, AMERICAN GIRL, and related marks (e.g., Registration No. 2,125, 919, December 30, 1997; and Registration No. 2,407,376, November 21, 2000).
Respondent registered the disputed domain name, <americangirldoll.us>, on April 18, 2009. Respondent uses the name for its website that provides links to the websites of third parties, some of whom sell products that compete directly with those offered by Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for United States 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.
By virtue of its presentation to the Panel of valid USPTO registrations for the trademark AMERICAN GIRL, Complainant has established its rights in that mark as required by Policy paragraph 4(a)(i). See Intel Corporation v. M. Macare a/k/a M. Macar, FA 660685 (Nat. Arb. Forum Apr. 26, 2006)(“Complainant has established rights in the following marks by registering them with the United States Patent and Trademark Office…”); see also Kraft Foods, Inc. v. Nowon Uknow, D2005-1153 (WIPO Jan. 1, 2006) (“The Complainant beyond question has established rights in the KRAFT mark through registration and use.”).
Clearly, the disputed domain name, <americangirldoll.us>, is not identical to the mark, AMERICAN GIRL. However, the Panel finds that the differences between the two are of such insignificance that they are confusingly similar. The Panel’s determination that the addition of the generic term “doll” and the ccTLD “.us” do not prevent a finding of confusing similarity is supported by innumerable prior UDRP decisions. This is particularly true because Complainant’s business revolves around the marketing of dolls. See Victoria Secret Stores Brand Management, Inc. v. Chen Fang Fang, FA 1257933 (Nat. Arb. Forum June 1, 2009) (finding <victoriasecretshoes.com> to be confusingly similar to the trademark VICTORIA’S SECRET, where the owner of that trademark sold an extensive line of shoes); see also Chanel Inc., v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (where the panel found that <chanelperfumes.com> and <chanelperfumes.net> were confusingly similar to the mark CHANEL, opining, “The addition of the generic term ‘perfumes’ is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant's business.”); see also Lifetouch, Inc. v. Fox Photographics c/o Larry Fox, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (“The addition of ‘.us’ to a mark fails to distinguish the domain name from the mark pursuant to the Policy.”).
As reasoned above, the Panel rules that Complainant has proven that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel notes that, although Complainant is charged under the Policy with the burden of proving that Respondent lacks rights or legitimate interests in the disputed domain name, the overwhelming majority of previous Policy panels have concluded that, as a practical matter in a UDRP proceeding, a complainant must establish only a prima facie case regarding this element before shifting the burden to a respondent to come forward with contrary evidence. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also Document Technologies, Inc. v. International Electronic Communications Inc., D2000-0270 (WIPO June 6, 2000) (“…once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
In this case, the Panel determines that Complainant’s presentation of unassailable rights in a trademark that is confusingly similar to the domain name in question and Complainant’s assertion that it did not consent to Respondent’s use of the mark in a domain name firmly establish a prima facie case that Respondent lacks rights or legitimate interests in said name.
Respondent’s rebuttal to the established prima facie case is extremely weak. Respondent does not contend that it, or a business it owns, is commonly known by the disputed domain name, so the defense cited in paragraph 4(c)(ii) is inapplicable to the instant case. Moreover, Respondent furnishes no refutation to Complainant’s contention that the name is used primarily (if not solely) to provide links to websites owned by third party competitors of Complainant. The Panel agrees with Complainant that such use is typically accompanied by the collection of so-called “click-through” fees paid by those third parties to the domain name owner, a contention that Respondent fails again to counter. Such uncontested contentions compel the Panel to find that neither paragraph 4(c)(i) – requiring a showing that Respondent is using the disputed domain name in a “bona fide offering of goods or services” – nor paragraph 4(c)(iii) – requiring a showing that Respondent is making “noncommercial or fair use” of the name – apply in this case. See American Communications Network, Inc. v. Names Company c/o DNS Support, FA 1256400 (Nat. Arb. Forum May 26, 2009) (“Respondent’s disputed domain name resolves to a website that promotes Complainant’s competitors and other third parties via click-through advertising and links. The Panel presumes Respondent has conducted this venture for the receipt of referral fees. Therefore, the Panel finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also St. Lawrence University v. Nextnet Tech c/o Domain Dept, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“Respondent is commercially benefiting from redirecting Internet users who reach Respondent’s website to third-party websites, by earning ‘click-through’ fees. This use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Finally, Respondent’s contention that a “win-win” situation is created for Complainant by Internet traffic through the disputed domain name is without merit, since such traffic would presumably flow otherwise directly through Complainant’s own domain name, to Complainant’s greater benefit.
Accordingly, the Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent’s threadbare Response in this proceeding offers no rebuttal to Complainant’s central contention with respect to the bad faith registration and use of the disputed domain name, which is that Respondent is using the name deliberately to furnish links – through Respondent’s website – to the websites of Complainant’s competitors. Thus, the Panel shall accept said contention and the ineluctable conclusion that such linkage is tied to click-through fees collected for Respondent’s benefit. Moreover, the Panel recognizes that such a process is viable only because Internet users, confused by the similarity of the disputed domain name and Complainant’s trademark, are lured intentionally by Respondent to its website while searching for Complainant’s products.
This line of reasoning leads the Panel to find that Respondent registered and is using the disputed domain name in bad faith because Respondent’s actions fall plainly within the purview of Policy paragraph 4(b)(iv), which calls for such a finding if the Panel determines that “by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.” See, e.g., The Association of Junior Leagues International Inc. v. This Domain Name My Be For Sale c/o Legend .nam, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (“Respondent is receiving click-through fees for each consumer it diverts to other websites and Respondent’s registration and use of the disputed domain name in order to profit from the goodwill associated with the mark indicates bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Abbott Laboratories v. United Worldwide Express Co., Ltd., D2004-0088 (WIPO Apr. 7, 2004)
Therefore, the Panel finds that Complainant has succeeded in showing that the disputed domain name was registered and is being used in bad faith.
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 <americangirldoll.us> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Panelist
Dated: July 28, 2009
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