national arbitration forum

 

DECISION

 

Retail Royalty Company and AEO Management Co. v. Above.com Domain Privacy

Claim Number: FA 1357326

 

PARTIES

Complainant is Retail Royalty Company and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, <americaneagleoutfittersclothing.com>, and <americaneagleclothingcompany.com>, registered with ABOVE.COM PTY LTD.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2010; the National Arbitration Forum received payment on November 9, 2010.

 

On November 10, 2010, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, <americaneagleoutfittersclothing.com>, and <americaneagleclothingcompany.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names.  ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@americaneagleaoutfitters.com, postmaster@americaneagleloutfitters.com, postmaster@americaneagleoutfitterss.com, postmaster@americaneagleoutfittersclothing.com, and postmaster@americaneagleclothingcompany.com.  Also on November 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <americaneagleclothingcompany.com> is confusingly similar to Complainant’s AMERICAN EAGLE mark.

 

Respondent’s <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, and <americaneagleoutfittersclothing.com> domain names are confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, <americaneagleoutfittersclothing.com>, and <americaneagleclothingcompany.com> domain names.

 

3.      Respondent registered and used the <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, <americaneagleoutfittersclothing.com>, and <americaneagleclothingcompany.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant designs, markets, and sells clothing, accessories, and footwear under the AMERICAN EAGLE and AMERICAN EAGLE OUTFITTERS marks.  Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN EAGLE mark (e.g., Reg. No. 3,545,443 issued December 9, 2008) as well as the AMERICAN EAGLE OUTFITTERS mark (e.g., Reg. No. 1,893,331 issued May 9, 1995).

 

Respondent registered the <americaneagleaoutfitters.com> domain name on March 22, 2009; the  <americaneagleloutfitters.com> domain name on January 24, 2010; the <americaneagleoutfitterss.com> domain name on June 13, 2008; the <americaneagleoutfittersclothing.com> domain name on May 5, 2009; and the <americaneagleclothingcompany.com> domain name on September 5, 2009.  The disputed domain names resolve to directory websites that provide hyperlinks to Complainant’s website as well as Complainant’s competitors.

 

DISCUSSION

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.

 

Preliminary Issue: Multiple Complainants

 

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

Complainant, Retail Royalty Company, and Complainant, AEO Management Co., are related companies.  The Panel finds there is a sufficient nexus between Complainants and will treat them as a single entity in this proceeding.  Hereinafter, Complainants will be collectively referred to as “Complainant.” 

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s trademark registrations sufficiently prove Complainant’s rights in the AMERICAN EAGLE and AMERICAN EAGLE OUTFITTERS marks pursuant to 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 Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).  Moreover, the Panel determines that it is irrelevant to the Policy ¶ 4(a)(i) analysis whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides.  See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Respondent’s <americaneagleclothingcompany.com> is confusingly similar to its AMERICAN EAGLE mark.  Respondent replicates Complainant’s mark in the disputed domain name, merely deleting the space between the words in the mark.  Respondent also adds the descriptive term “clothing,” which describes Complainant’s retail products, and the generic term “company.”  Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name.  The Panel finds that deleting spaces, adding descriptive and generic terms, and affixing a gTLD do not negate a finding of confusingly similar.  See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Accordingly, the Panel determines that Respondent’s <americaneagleclothingcompany.com> is confusingly similar to Complainant’s AMERICAN EAGLE mark under Policy ¶ 4(a)(i).

 

Respondent’s <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, and <americaneagleoutfittersclothing.com> domain names are confusingly similar to its AMERICAN EAGLE OUTFITTERS mark.  Once again, Respondent fully incorporates Complainant’s mark in the disputed domain names and then simply omits the spaces between the words in the mark.  Respondent then adds a letter before or after the third word in Complainant’s mark in the <americaneagleaoutfitters.com> (letter “a” before “outfitters”), <americaneagleloutfitters.com> (letter “l” before “outfitters”), and <americaneagleoutfitterss.com> (letter “s” after “outfitters”) domain names.  In addition, Respondent attaches the descriptive term “clothing” and the gTLD “.com” to Complainant’s mark in the <americaneagleoutfittersclothing.com> domain name.  The Panel finds these slight alterations do not sufficiently distinguish Respondent’s domain names from Complainant’s mark.  See Gurney’s Inn Resort & Spa Ltd. v. Whitney, supra; see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, supra.  Thus, the Panel finds Respondent’s <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, and <americaneagleoutfittersclothing.com> domain names are confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

 

 

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names.  Respondent’s failure to submit a Response is evidence that Respondent lacks rights or legitimate interests.  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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Complainant asserts it has not granted Respondent permission to use either its AMERICAN EAGLE or AMERICAN EAGLE OUTFITTERS mark in any way.  Furthermore, the WHOIS information does not suggest Respondent is commonly known by the disputed domain names.  With no evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 known by the disputed domain name).

 

Complainant states that Respondent’s disputed domain names resolve to directory websites that provide hyperlinks to Complainant’s website as well as hyperlinks to the websites of Complainant’s competitors.  Screen shots of the resolving websites show sites displaying hyperlinks with titles like “American Eagle Outfitters,” “Hollister Clothing Co,” “Mens Sweatshirts,” “Abercrombie Clothes,” “Cheap Clothes Online,” and “Macy’s Mens Clothing.”  The Panel presumes that Respondent uses the disputed domain names in order to profit from click-through fees.  Therefore, the Panel finds that Respondent does not use the <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, <americaneagleoutfittersclothing.com>, and <americaneagleclothingcompany.com> domain names to make 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

 

The Panel finds that Respondent creates common misspellings of Complainant’s AMERICAN EAGLE OUTFITTERS mark.  The Panel finds that this is typosquatting, further evidence that Respondent lacks rights and legitimate interests in the <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, and <americaneagleoutfitterss.com> domain names under Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent uses the disputed domain names to divert Internet users seeking Complainant’s products to to Complainant’s competitors.  Therefore, the Panel finds the disputed domain names disrupt Complainant’s business, bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Respondent likely profits from its use of the confusingly similar disputed domain names through the receipt of click-through fees.  Therefore, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.  Accordingly, the Panel finds that Respondent’s use constitutes registration and use in bad faith under Policy ¶ 4(b)(iv).  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Finally, the Panel finds that Respondent has engaged in typosquatting through its use of the <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, and <americaneagleoutfitterss.com> domain names, which are common misspellings of Complainant’s AMERICAN EAGLE OUTFITTERS mark.  This use provides additional evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of 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 <americaneagleaoutfitters.com>, <americaneagleloutfitters.com>, <americaneagleoutfitterss.com>, <americaneagleoutfittersclothing.com>, and <americaneagleclothingcompany.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  December 16, 2010

 

 

 

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