Retail Royalty Company, and AEO Management Co. v. Marcus Roland / n/a
Claim Number: FA1012001364000
Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Marcus Roland / n/a (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aeo-hr.com>, <ae-hr.com>, <americaneagle-usa.com>, and <americaneagle-hr.com>, registered with Direct Internet Solutions Pvt. Ltd., d/b/a Publicdomainregistry.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2010; the National Arbitration Forum received payment on December 17, 2010.
On December 17, 2010, Direct Internet Solutions Pvt. Ltd., d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <aeo-hr.com>, <ae-hr.com>, <americaneagle-usa.com>, and <americaneagle-hr.com> domain names are registered with Direct Internet Solutions Pvt. Ltd., d/b/a Publicdomainregistry and that Respondent is the current registrant of the names. Direct Internet Solutions Pvt. Ltd., d/b/a Publicdomainregistry has verified that Respondent is bound by the Direct Internet Solutions Pvt. Ltd., d/b/a Publicdomainregistry 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 December 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2011 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@aeo-hr.com, postmaster@ae-hr.com, postmaster@americaneagle-usa.com, postmaster@americaneagle-hr.com. Also on December 20, 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 January 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant designs, markets and sells casual, current clothing, accessories, basics, and footwear targeting 15 to 25 year-olds under the marks American Eagle Outfitters, American Eagle, AE and AEO (the "American Eagle Marks") at its own American Eagle Outfitters retail stores and on its website <ae.com>. Complainant offers well-designed, high-quality merchandise at affordable prices, and is one of the top ranking youth lifestyle brands. American Eagle Outfitters opened its first American Eagle Outfitters retail store in the United States in 1977, and now operates over 950 retail stores throughout the United States, Canada, Kuwait and the UAE. Over the past thirty years, American Eagle Outfitters has achieved strong consumer recognition and good will, and it currently ships products to more than 75 countries worldwide.
Since 1977, Complainant has sold billions of dollars worth of products under the American Eagle Marks. Sales for various goods bearing the American Eagle Marks worldwide over the past ten years are estimated at over USD $20 Billion, including approximately USD $3.0 Billion in 2009.
Complainant has also spent hundreds of millions of dollars in advertising and promoting goods and services under the American Eagle Marks. For example, Complainant has advertised its retail stores and products bearing the American Eagle Marks through print media such as newspapers and magazines, including Seventeen, Lucky, Jane, Teen Vogue, Glamour, Teen People, CosmoGirl, Spin, Maxim, Mademoiselle, Details, InStyle, Rolling Stone, and FHM.
Complainant also advertises the American Eagle Marks on the Internet, and makes extensive use of sweepstakes, e-mail blasts, and proprietary content such as music, videos, and slide-shows to draw its target consumers to its <ae.com> website. In addition, Complainant's merchandise itself often proclaims the American Eagle brand message. One of the hallmarks of Complainant's design team is its use of the American Eagle Marks as design elements on signature merchandise, such as jeans, shirts, hoodies and tote bags.
As a result of such extensive use and promotion, the American Eagle Marks have acquired a high degree of public recognition, fame, and distinctiveness as a symbol of the source of high quality goods offered by Complainant, and embody valuable reputation and good will belonging exclusively to Complainant.
Complainant owns numerous U.S. trademark registrations for the American Eagle Marks in connection with clothing, accessories, and retail and online services. All of the registrations are valid, subsisting, and in full force and effect.
Complainant is also the owner of numerous trademark registrations and applications for its American Eagle Marks in over 100 countries throughout the world, including but not limited to the countries of the Andorra, Argentina, Australia, Bolivia, Brazil, Canada, China, Egypt, European Community, Hong, Kong, Indonesia, Japan, Mongolia, New Zealand, Norway, Peru, Russia, Saudi Arabia, Singapore, South Korea, Switzerland, Vietnam, and many others.
Complainant has registered and uses, through their related company AE Direct Co. LLC, inter alia, the domain names <ae.com> (registered March 17, 1999) and <aeo.com> (registered October 12, 1995), which direct viewers to Complainant's website at <ae.com>, which delivers information concerning Complainant and its products and services to the public.
Due to Complainant's long and continuous use of the American Eagle Marks in connection with its retail stores, online stores, clothing, accessories, and other products and services, as well as the excellence of its products, the American Eagle Marks are widely recognized by the public as indicators of the source of Complainant's goods and services. Accordingly, the American Eagle Marks have acquired a high degree of public recognition and distinctiveness and symbolize enormously valuable good will for Complainant.
Complainant's rights in and to the American Eagle Marks have been recognized by numerous panels transferring domain names consisting of American Eagle-variant marks to Complainant under the UDRP. See, e.g., American Eagle Outfitters, Inc. and Retail Royalty Company v. Tony Leung a/k/a Kam Vam, NAF Claim No.: FA0206000114647 (recognizing the "famous nature" of Complainant's AMERICAN EAGLE OUTFITTERS mark); American Eagle Outfitters, Inc. and Retail Royalty Company v. John Zuccarini a/k/a Country Walk, NAF Claim No.: FA0304000155178 (finding that Complainant established rights in the AMERICAN EAGLE OUTFITTERS mark through registration with the USPTO and by continuous use in commerce since 1977); American Eagle Outfitters, Inc. and Retail Royalty Company v. americaneagleoutfitter c/o Web Master, NAF Claim No.: FA0503000442221 (same); American Eagle Outfitters, Inc. and Retail Royalty Company v. Admin c/o LaPorte Holdings, NAF Claim No.: FA0505000473826 (same).
FACTUAL AND LEGAL GROUNDS
This Amended Complaint is based on the following factual and legal grounds: ICANN Rule 3(c)(ix).
(a.) Respondent's Domain Name Is Identical or Confusingly Similar to Complainant's American Eagle Marks. ICANN Rule 3(c)(ix)(1); ICANN Policy ¶4(a)(i).
As evidenced above, Complainant has demonstrated its ownership and use of the American Eagle Marks, the United States and foreign trademark registrations it owns for its American Eagle Marks, and the manner in which Complainant uses its American Eagle Marks in relation to its operation of American Eagle Outfitters retail stores, its operation of the <ae.com> Internet website, its sales of American Eagle branded goods, and its provision of American Eagle branded services. Complainant's American Eagle Marks are widely and well-known and indicative of the source of its retail stores, Internet website, products and services. Indeed, Complainant's ownership of the numerous registrations for its American Eagle Marks, as set out above, establishes that Complainant has a presumption of rights in the American Eagle Marks. See Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The burden then shifts to the Respondent to refute that presumption).
The domain names AEO-HR.COM, AE-HR.COM, AMERICANEAGLE-USA.COM and AMERICANEAGLE-HR.COM are identical to and fully incorporate one or more of Complainant's federally registered American Eagle Marks. Thus, the domain names registered by Respondent should be considered confusingly similar to Complainant's American Eagle Marks because they incorporate Complainant's American Eagle Marks in their entirety. ICANN Rule 3(c)(ix)(1); ICANN Policy ¶4(a)(i).
The inclusion of generic or descriptive terms, such as "hr" (short for human resources as set out below) and "usa" to a trademark term does not alter the conclusion. Other panels have held that the registration of a domain name that incorporates a third-party mark in its entirety and simply adds descriptive terms to the mark is sufficient to establish that the domain name is confusingly similar to the third-party mark pursuant to paragraph 4(a)(i) of the Policy. In fact, the identical issue was decided in American Eagle Outfitters, Inc. and Retail Royalty Company v. Admin c/o LaPorte Holdings, NAF Claim No.: FA0505000473826, where an NAF panel found that the domain name <americaneaglestores.com> was confusingly similar to Complainant's AMERICAN EAGLE OUTFITTERS mark; see also Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent's domain names, which incorporate Complainant's entire mark and merely added the terms "traffic school," "defensive driving," and "driver improvement," did not add any distinctive features capable of overcoming a claim of confusing similarity); Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word "bomb," the domain name was rendered confusingly similar to Complainant's mark).
The Respondent's websites AEO-HR.COM, AE-HR.COM and AMERICANEAGLE-USA.COM currently appear to be suspended as a result of Complainant’s requests and also currently are click-through linking portals that include links to generic search items, or to Complainant's Internet website, or that of its competitors, such as Aeropostale and Wrangler. Thus, because Respondent's domain names, AEO-HR.COM, AE-HR.COM and AMERICANEAGLE-USA.COM, so resemble Complainant's American Eagle Marks, the use of those domain names by Respondent is likely to cause confusion or mistake or to deceive persons by creating the erroneous impression that Respondent's websites are that of Complainant, or that they are endorsed by, or are sponsored by, or are connected in some way with Complainant. As a result, the registration of the domain names AEO-HR.COM, AE-HR.COM and AMERICANEAGLE-USA.COM by Respondent is injurious to Complainant.
With respect to Respondent's website AMERICANEAGLE-HR.COM, there is currently no operative website associated with that domain. Thus, consumers attempting to reach Complainant by typing that domain name (see below regarding Respondent's bad faith) may be erroneously mislead into believing that Complainant's website is no longer in operation. Thus registration of the AMERICANEAGLE-HR.COM domain by Respondent is injurious to Complainant.
Complainant has been also been using at least the AE-HR.COM, AEO-HR.COM and AMERICANEAGLE-HR.COM domains to undertake a sham operation whereby Respondent poses as Complainant and seeks to obtain credit reports from unwary individuals. Specifically, Respondent has circulated several fraudulent job postings through the craigslist.org website. Respondent's fraudulent job posting offers a warehouse job. When individuals respond to the posting, they receive a message purportedly written by a named Division Manager, Human Resources, American Eagle Outfitters, such as Susan Phillips (with the e-mail address phillips5@ae-hr.com), Christine Rose (with an e-mail address of christine@americaneagle-hr.com) or Mellisa Parker (with an e-mail address of mellisa3@aeo-hr.com), requesting a current copy of the applicant's credit report and directing them to http://www.ae-hr.com, http://www.americaneagle-hr.com or http://www.aeo-hr.com for a copy of the report, which in turn redirects them to another site where they can supposedly obtain the report. Susan Phillips, Christine Rose and Mellisa Parker are not employees of Complainant, phillips5@ae-hr.com, christine@americaneagle-hr.com and mellisa3@aeo-hr.com are not e-mail addresses of Complainant or its employees, and http://www.ae-hr.com, http://www.americaneagle-hr.com and http://www.aeo-hr.com are websites currently registered to Respondent.
Moreover, Respondent clearly knew of the American Eagle Marks and brand as his job posting on Craigslist.org specifically directed people responding to the listing to contact a human relations person at "American Eagle Outfitters." Respondent's adoption, registration, and use of the challenged domain names is without the license or permission of Complainant. Therefore, Respondent's continued registration and use of those domain names without the consent or permission of Complainant infringes Complainant's rights under the United States federal Trademark Act, namely, 15 U.S.C. Section 1114, and 15 U.S.C. Section 1125(a)(1)(A) of the Lanham Act, and constitutes false advertising under 15 U.S.C. Section 1125(a)(1)(B) of the Lanham Act, and constitutes unfair competition in violation of 15 U.S.C. 1125(a).
(b.) Respondent Has No Rights Or Legitimate Interest In the Challenged Domain Name. ICANN Rule 3(c)(ix)(2); ICANN Policy ¶4(a)(ii)
Complainant does not know of any trademark or other intellectual property rights, or any other legitimate interest held by Respondent, in the AEO-HR.COM, AE-HR.COM, AMERICANEAGLE-USA.COM or AMERICANEAGLE-HR.COM domain names. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii). Respondent has not sought nor been granted permission to use Complainant's American Eagle Marks in any way. There is also no evidence that Respondent is commonly known by the disputed domain name, pursuant to Policy ¶4(c)(ii). The WHOIS registration information also fails to imply that Respondent is commonly known by the names "AEO," "AE," or "American Eagle." See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Moreover, Respondent appears to have provided false contact information in registering the challenged domains as reflected in the Whois information. A letter Complainant sent to Respondent at that address was returned as undeliverable. A photograph of what is present at the address provided by Respondent in the registrations of the challenged domains shows that address is a storefront and, thus, a false one. Similarly, the telephone number listed by Respondent is not in service. Therefore, Complainant submits that Respondent does not have any rights or legitimate interests in the challenged domain names.
Furthermore, Respondent's domain names contain one or more of Complainant's American Eagle Marks in their entirety for the purpose of misleading consumers into believing they have contacted Complainant, when in fact they have not, all for the apparent purpose of defrauding consumers into providing their credit information. In addition, as currently in operation, Respondent's domains include links to generic search terms, or to competitors of Complainant. Other Panels have concluded that this is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent's use of the complainant's entire mark in domain names makes it difficult to infer a legitimate use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent's diversionary use of the complainant's marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant's competitors, was not a bona fide offering of goods or services); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) ("The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.").
Respondent is not affiliated with, licensed by, in privity with Complainant, it has not been given permission to use any of the American Eagle Marks by Complainant, and it is not otherwise in any way connected with Complainant or its affiliates. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Moreover, Respondent did not seek to register the challenged domain names until the last 30 days. By that time, Complainant had been using its American Eagle Marks for over twenty-five years. These facts weigh strongly against any conclusion that Respondent selected its AEO-HR.COM, AE-HR.COM, AMERICANEAGLE-USA.COM and AMERICANEAGLE-HR.COM domain names in good faith. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that "[I]t would be unconscionable to find a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business").
It appears that Respondent's sole motivation in registering the AEO-HR.COM, AE-HR.COM, AMERICANEAGLE-USA.COM and AMERICANEAGLE-HR.COM domain names was for the purpose of misleading consumers into believing they were communicating with Complainant in an effort to obtain a job, and then fraudulently obtaining those consumers' credit information, all in the name of Complainant. Such use is not, and cannot constitute, a legitimate interest in a domain name.
(c.) Respondent's Registration of the Challenged Domain Name Should be Considered as Having Been Registered and Being Used in Bad Faith. ICANN Rule 3(c)(ix)(3); ICANN Policy ¶4(a)(iii)
Generally, the Panel looks at "the totality of circumstances" to determine if Respondent's bad faith in registering a domain is apparent. See, e.g., Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances"). The following circumstances compel the transfer of the AEO-HR.COM, AE-HR.COM, AMERICANEAGLE-USA.COM and AMERICANEAGLE-HR.COM domain names.
(a.) Respondent's registration of the challenged domain name appears to be with the intent of fraudulently obtaining from individuals responding to a fictitious job posting on the craigslist.com domain credit information of that individual, all in the name of Complainant.
(b.) Respondent has submitted a false address and telephone number in connection with registering the challenged domains in breach of Respondent's warranty under paragraph 2(a) of the Uniform Policy. See, e.g., Intrasweet Sandestin Co. LLC v. Admin Contact, FA0910001289075 (Nat. Arb. Forum Dec. 7, 2009) (finding the submission of deceptive contact information when registering a domain name is evidence of use in bad faith); ICANN Policy ¶2(a) .
(c.) Because Respondent is not affiliated with or connected in any way with Complainant, it is further submitted that Respondent registered the domain name in bad faith. Complainant submits that Respondent obtained the challenged domain name merely for the purpose of misleading consumers into believing they were corresponding with Complainant, when in fact they were not, in order to exploit the rights of Complainant, and/or to profit from "pirating" Complainant's ability to use a confusingly similar variation of Complainant's American Eagle Marks, and to frustrate Complainant's business opportunities on the Internet by diverting customers away from a legitimate website owned and/or operated by Complainant.
(d.) Prior UDRP panels have found bad faith from the circumstance of a registrant selecting a domain name which is confusingly similar to a complainant's mark and that would likely be associated with complainant's well-known products or services. See, e.g. Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding bad faith where respondent used the disputed domain name to "redirect the Complainant's consumers and potential consumers to commercial web sites which are not affiliated with Complainant.").
Whatever Respondent's intent in registering the domain name, Respondent's actions have disrupted Complainant's business. Respondent's actions are injurious to Complainant because individuals responding to Respondent's fraudulent advertisement will erroneously believe that Complainant has duped them into providing their credit information. In addition, Respondent may attempt to attract, for Respondent's own commercial gain, Internet users to Respondent's challenged website, or to some other on-line location owned or controlled by Respondent, by creating a likelihood of confusion with Complainant's American Eagle Marks 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.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Retail Royalty Company and AEO Management Co., are related companies that design, market, and sell clothing and footwear. The Panel elects to treat these parties as a single entity for the purposes of these proceedings. Complainant conducts its business under the AE and AMERICAN EAGLE marks which are both registered with the United States Patent and Trademark Office (“USPTO”): AE (e.g., Reg. No. 2,360,451 issued June 20, 2000) and AMERICAN EAGLE (e.g., Reg. No. 3,545,443 issued December 9, 2008).
Respondent Marcus Roland registered the disputed domain names no earlier than December 3, 2010. The <aeo-hr.com>, <ae-hr.com>, and <americaneagle-usa.com> domain names resolves to websites featuring links to Complainant’s competitors in the clothing industry. The <aeo-hr.com>, <ae-hr.com>, and <americaneagle-hr.com> domain names resolve to websites attempt to gain financial information from Internet users.
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 alleges it has established rights in the AE mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,360,451 issued June 20, 2000). Previous panels have concluded that registration of a mark with a federal trademark authority is sufficient to establish rights in the mark. See 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).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The Panel finds, based on Complainant’s registration of the AE mark with the USPTO, that it has established rights in the mark pursuant to Policy ¶4(a)(i).
Complainant also alleges it has established rights in the AMERICAN EAGLE mark based on its registration of the mark with the USPTO (e.g., Reg. No. 3,545,443 issued December 9, 2008). Complainant alleges that registration of a mark with a federal trademark authority, such as the USPTO, is sufficient to establish rights in the mark pursuant to Policy ¶4(a)(i). The Panel finds accordingly. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant alleges the <aeo-hr.com> and <ae-hr.com> domain names are confusingly similar to the AE mark. Respondent’s domain names each include the addition of a hyphen, the letters “h” and “r,” which stands for the generic terms “human resources,” and the generic top-level domain (“gTLD”) “.com.” Furthermore, the <aeo-hr.com> domain name includes the addition of the letter “o” to Complainant’s AE mark. Complainant alleges that the addition of multiple letters, punctuation marks such as hyphens, and a gTLD are insufficient in creating a unique domain name. Therefore, the Panel finds Respondent’s disputed domain names to be confusingly similar to Complainant’s mark under Policy ¶4(a)(i). See Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).
Complainant contends the <americaneagle-usa.com> and <americaneagle-hr.com> domain names are confusingly similar to its AMERICAN EAGLE mark. Respondent’s disputed domain names incorporate Complainant’s entire mark while merely removing the space between the terms. Moreover, Respondent added a hyphen, multiple combinations of letters such as “usa,” which is an abbreviation for the geographic terms “United States of America,” and “hr,” which is an abbreviation for the generic terms “human resources,” and the gTLD “.com” to Complainant’s mark. Complainant alleges that adding punctuation marks such as a hyphen, multiple letters, and a gTLD are actions that do not remove the disputed domain names from the realm of confusing similarity to Complainant’s AMERICAN EAGLE mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶4(a)(i)); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
The Panel finds Policy ¶4(a)(i) has been established.
Pursuant to Policy ¶4(a)(ii), the burden resides with Complainant to show Respondent does not have rights or legitimate interests in the disputed domain names. After Complainant makes a prima facie showing in support of its allegations, the burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain names under Policy ¶4(a)(ii). The Panel determines that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may presume Respondent lacks the required rights or legitimate interests in the disputed domain names. However, this Panel chooses to examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain names under Policy ¶4(c). 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant’s assertion Respondent is not commonly known by the disputed domain names has not been contradicted by Respondent. Furthermore, Complainant contends Respondent is not authorized to use the AE or AMERICAN EAGLE marks. The Panel exercised its right to examine the record in search of evidence Respondent is commonly known by the disputed domain names. The Panel found no such evidence. Additionally, the WHOIS information lists the registrant of the disputed domain names as “Marcus Roland,” which Complainant alleges is not similar to any of the disputed domain names. The Panel determines that Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii). See 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); see also 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).
Complainant alleges Respondent uses the <aeo-hr.com>, <ae-hr.com>, and <americaneagle-usa.com> domain names to redirect Internet users to Respondent’s websites, which consist of links to various third party websites that compete with Complainant’s clothing business. The Panel surmises Respondent receives click-through fees in return for redirecting Internet traffic to third-party websites. The Panel finds Respondent’s use of confusingly similar domain names to operate websites that compete with Complainant is not a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4 (c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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, Respondent’s <aeo-hr.com>, <ae-hr.com>, and <americaneagle-hr.com> domain names resolve to websites that are being used to acquire personal financial information from Internet users. Specifically, Respondent used the domain names to post fraudulent job advertisements for Internet users to access but only if they divulged personal financial information. Complainant contends Respondent’s use of the domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). The Panel finds accordingly. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶4(c)(i) or (iii)).
The Panel finds Policy ¶4(a)(ii) has been established.
Respondent used the <aeo-hr.com>, <ae-hr.com>, and <americaneagle-usa.com> domain names and resolving websites to post hyperlinks to third-party websites that compete with Complainant. Including hyperlinks to Complainant’s competitors negatively affects Complainant’s business because Internet users searching for Complainant’s clothing products may purchase similar items from Complainant’s competitors as a result of Respondent’s registration and use of the disputed domain names. The Panel finds this use to be evidence of bad faith registration and use under Policy ¶4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Complainant contends Respondent used the <aeo-hr.com>, <ae-hr.com>, and <americaneagle-usa.com> domain names to resolve Internet users to websites that post links to Complainant’s competitors. Complainant alleges these users are confused regarding Complainant’s affiliation with and sponsorship of the disputed domain names and resolving websites. The Panel determines Respondent earns click-through fees from this confusion and Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also 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).
Respondent presumably benefits commercially from using the <aeo-hr.com>, <ae-hr.com>, and <americaneagle-hr.com> domain names to acquire personal financial information from unsuspecting Internet users. Complainant puts forth that this is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv) because Internet users are confused as to Complainant’s involvement with the disputed domain names. The Panel agrees with Complainant’s assertions. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
Complainant alleges Respondent registered and used the <aeo-hr.com>, <ae-hr.com>, and <americaneagle-hr.com> domain names in bad faith. These domain names are not only confusingly similar to Complainant’s marks, but are also being used to redirect Internet users to websites that fraudulently attempt to acquire personal financial information. The Panel finds these actions warrant a finding of bad faith registration and use under ¶4(a)(iii) of the Policy. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds Policy ¶4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeo-hr.com>, <ae-hr.com>, <americaneagle-usa.com>, and <americaneagle-hr.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 24, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page