American Girl, LLC and American Girl Brands, LLC v. Eileen Coleman
Claim Number: FA0908001279516
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 Eileen Coleman
(“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <americangirldollsclothing.com>, registered with Godaddy.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 9, 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@americangirldollsclothing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <americangirldollsclothing.com> domain name is confusingly similar to Complainant’s AMERICAN GIRL mark.
2. Respondent does not have any rights or legitimate interests in the <americangirldollsclothing.com> domain name.
3. Respondent registered and used the <americangirldollsclothing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Girl,
LLC and American Girl Brands, LLC, has used its AMERICAN GIRL mark in
connection with marketing, distributing, and selling dolls, doll clothing and
accessories, clothing for girls, and books since 1986. Complainant holds several registrations of
the AMERICAN GIRL mark with the United States Patent and Trademark Office
(“USPTO”) (i.e., Reg. No. 2,125,919 issued
Respondent registered the <americangirldollsclothing.com>
domain name on
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 has submitted several registrations of the
AMERICAN GIRL mark that it holds with the USPTO (i.e.,
Reg. No. 2,125,919 issued
Respondent’s <americangirldollsclothing.com>
domain name contains Complainant’s entire AMERICAN GIRL mark, adds the
descriptive terms “dolls” and “clothing,” both of which describe Complainant’s
products, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that none of these additions
to Complainant’s mark sufficiently distinguish the disputed domain name from
Complainant’s mark. Therefore, the Panel
finds that the <americangirldollsclothing.com>
domain name is confusingly similar to Complainant’s AMERICAN GIRL mark under
Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity [sic] or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent
lacks rights and legitimate interests in the disputed domain name. Upon
making such a sufficient showing, the burden then shifts to Respondent and
Respondent must establish that it has rights or legitimate interests in the
disputed domain name. The Panel finds
that Complainant has sufficiently made its prima
facie showing under Policy ¶ 4(a)(ii).
See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26,
2006) (finding the “complainant must first make a prima facie case that
[the] respondent lacks rights and legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent
to show it does have rights or legitimate interests.”); see also G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum
The WHOIS information for the <americangirldollsclothing.com> domain name lists “Eileen Coleman” as the registrant, which does not
indicate that Respondent is commonly known by the disputed domain name. Moreover, Respondent has not presented any evidence
to suggest otherwise. Therefore, the
Panel finds that Respondent is not commonly known by the <americangirldollsclothing.com>
domain name under Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent’s <americangirldollsclothing.com>
domain name resolves to a website that displays Complainant’s AMERICAN GIRL
mark and color scheme. The resolving
website also features hyperlinks to competing third-party websites that auction
Complainant’s products. Moreover,
Respondent is not an authorized dealer or retailer of Complainant’s
products. Therefore, the Panel finds
that Respondent’s use of the disputed domain name 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). See 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
Furthermore, the Panel finds that Respondent’s display of Complainant’s AMERICAN GIRL mark and use of Complainant’s color scheme is an attempt by Respondent to pass itself off as Complainant. The Panel further finds that Respondent’s attempt to pass itself off as Complainant is further evidence that Respondent lacks rights and legitimate interests in the <americangirldollsclothing.com> domain name under Policy ¶ 4(a)(ii). See 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)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent, upon registering the <americangirldollsclothing.com> domain name on
Moreover, the Panel finds that Respondent’s use of
Complainant’s mark and color scheme on the website resolving from the <americangirldollsclothing.com>
domain name creates a likelihood of confusion as to Complainant’s affiliation
with the disputed domain name in an attempt to pass itself off as
Complainant. The Panel further finds
that Respondent’s conduct, presumably for commercial gain, constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum
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 <americangirldollsclothing.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 28, 2009
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