American Girl, LLC and American Girl Brands, LLC v. George Rau
Claim Number: FA0907001271493
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 George Rau (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <americangirlmodel.org>, registered with Melbourne IT, Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 1, 2009.
On July 7, 2009, Melbourne IT, Ltd. confirmed by e-mail to the National Arbitration Forum that the <americangirlmodel.org> domain name is registered with Melbourne IT, Ltd. and that Respondent is the current registrant of the name. Melbourne IT, Ltd. has verified that Respondent is bound by the Melbourne IT, Ltd. 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 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 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@americangirlmodel.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <americangirlmodel.org> domain name is confusingly similar to Complainant’s AMERICAN GIRL mark.
2. Respondent does not have any rights or legitimate interests in the <americangirlmodel.org> domain name.
3. Respondent registered and used the <americangirlmodel.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
American Girl, LLC and American Girl Brands, LLC (collectively, “Complainant”) have used the AMERICAN GIRL mark since 1986 to market, distribute, and sell a famous line of products that includes books, dolls, doll clothing, and accessories for girls. Complainant is the owner of the AMERICAN GIRL mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,125,919 issued December 30, 1997).
Respondent registered the <americangirlmodel.org> domain name on December 8, 2008. The disputed domain name resolves to a website entitled “American Girl Model,” which describes itself as a charitable and educational foundation whose purpose is “to promote and introduce girls who demonstrate high moral standards and values to media film industries and model strong family values” through its modeling and casting services. Each page of Respondent’s website features the following disclaimer: “Americangirlmodel is not affiliated or associated in any way shape or form with American Girl, AG, its affiliates, or any of its products or films.”
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 asserts its rights in the AMERICAN GIRL mark
through its registration of the mark with the USPTO. The Panel finds that
this federal registration has secured Complainant’s rights in
the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006) (“(Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”); see also
Complainant contends that Respondent’s <americangirlmodel.org> domain name is confusingly similar to Complainant’s AMERICAN GIRL mark under Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s AMERICAN GIRL mark in its entirety with the only alterations being the omission of the space between the words, the addition of the generic word “model,” and the addition of the generic top-level domain “.org.” The Panel finds that these modifications are insufficient to distinguish Respondent’s domain name from Complainant’s mark. Thus, the Panel finds that Respondent’s <americangirlmodel.org> domain name is confusingly similar to Complainant’s AMERICAN GIRL mark pursuant to Policy ¶ 4(a)(i). See Mattel, Inc. v. Sokolova, FA 806288 (Nat. Arb. Forum Nov. 8, 2006) (finding that the addition of the generic term “model” to the end of the BARBIE mark does not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <americangirlmodel.org> domain name. If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <americangirlmodel.org> domain name pursuant to Policy ¶ 4(a)(ii). Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the <americangirlmodel.org> domain name. However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”).
The disputed domain name is being used to resolve to the commercial website of Respondent, which is unrelated to Complainant’s AMERICAN GIRL mark. The Panel finds that such use, for Respondent’s commercial gain, does not constitute 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Furthermore, Complainant contends that Respondent is not commonly known by the <americangirlmodel.org> domain name under Policy ¶ 4(c)(ii). The pertinent WHOIS information identifies the registrant as “George Rau,” which suggests that Respondent is not commonly known by the disputed domain name. There is no evidence in the record to the contrary and thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The disputed domain name’s resolving website contains a disclaimer, asserting that Respondent is not affiliated with Complainant. The Panel finds that Respondent’s use of a disclaimer does not mitigate confusion as to Complainant’s sponsorship of the website and thus, is further evidence that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is intentionally attempting to attract Internet users, for financial gain, to its domain name by creating a likelihood of confusion with Complainant and its AMERICAN GIRL mark. The Panel finds that Respondent’s appropriation of Complainant’s mark for commercial profit constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
The Panel finds that Respondent’s use of a disclaimer on the website resolving from the <americangirlmodel.org> domain name does not minimize the likelihood of confusion among Internet users as to Complainant’s affiliation with the disputed domain name. The Panel finds that this further exhibits bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under 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 <americangirlmodel.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 13, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum