American Girl, LLC and American Girl Brands, LLC v. George Rau
Claim Number: FA1002001308206
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 <americangirlrolemodel.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 February 16, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 17, 2010.
On February 17, 2010, Melbourne IT, Ltd confirmed by e-mail to the National Arbitration Forum that the <americangirlrolemodel.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 February 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 11, 2010 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@americangirlrolemodel.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2010, 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 <americangirlrolemodel.org> domain name is confusingly similar to Complainant’s AMERICAN GIRL mark.
2. Respondent does not have any rights or legitimate interests in the <americangirlrolemodel.org> domain name.
3. Respondent registered and used the <americangirlrolemodel.org> 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 registered its AMERICAN GIRL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,125,919 issued November 28, 2000). Complainant uses the mark in connection with books featuring fictional characters, dolls based on those characters, doll clothing and accessories, clothing for girls, online services, entertainment services and educational programs along with other related goods and services.
Respondent, George Rau, registered the disputed domain name September 3, 2009. The disputed domain name resolves to a website providing model services for girls who demonstrate high moral standards, unrelated to the goods sold by the Complainant.
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 it has rights in its AMERICAN GIRL mark
due to its registration with the USPTO (Reg. No. 2,125,919 issued November 28,
2000). The Panel finds that Complainant’s registrations of its AMERICAN GIRL
mark with the USPTO is sufficient to establish Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i). See
Respondent’s <americangirlrolemodel.org> domain name is confusingly similar to Complainant’s AMERICAN GIRL mark because Respondent’s domain name incorporates the dominant features of Complainant’s mark, adds two generic terms, and adds the generic top-level domain “.com.” The Panel finds that such minor alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case in support of these allegations, the burden shifts to the Respondent to establish that is has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(i). The Panel finds Complainant has established a prima facie case in support of its complaint. The burden shifts to the Respondent, from whom no response was received. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of 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) (“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 WHOIS information for the <americangirlrolemodel.org> domain name lists “George Rau” as the registrant, which indicates
that Respondent is not commonly known by the disputed domain name. Respondent
has not offered any evidence to suggest that Policy ¶ 4(c)(ii)
applies in this case. Furthermore, Complainant asserts Respondent is not
licensed or otherwise authorized to use the AMERICAN GIRL mark. Therefore, the
Panel finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent
failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly know by the disputed domain name); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The disputed domain name resolves to a website providing
model services for girls, unrelated to the books, dolls, clothing, and other
goods sold by the Complainant. The Panel finds Respondent’s use of the <americangirlrolemodel.org> name is
not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a making legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent
uses the <americangirlrolemodel.org> domain
name resolves to a website providing model services for girls, unrelated to the
goods sold by the Complainant. Internet users, interested in Complainant and
Complainant’s characters and related products, may become confused as to
Complainant’s sponsorship and affiliation of the resolving website. Respondent
attempts to profit from this confusion by providing unrelated services. The
Panel finds Respondent’s registration and use of the <americangirlrolemodel.org> domain name creates a
likelihood of confusion with the Complainant’s mark and qualifies as bad faith
registration and use pursuant to Policy ¶ 4 (b)(iv). See Allianz of Am. Corp. v.
Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum
May 19, 2006) (holding that the respondent registered and used the
<myspacebot.com> domain name in bad faith by diverting Internet users
seeking the complainant’s website to its own website for commercial gain
because the respondent likely profited from this diversion scheme).
The Panel finds 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 <americangirlrolemodel.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 2, 2010
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