Retail Royalty Company, and AEO Management Co. v. Yi Luo
Claim Number: FA1102001371857
Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Yi Luo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneagleoutfitterscoupons.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2011; the National Arbitration Forum received payment on February 8, 2011.
On February 8, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <americaneagleoutfitterscoupons.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 February 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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@americaneagleoutfitterscoupons.com. Also on February 9, 2011, 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 March 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is two separate but related companies, to be considered together for purposes of this proceeding.
Complainant owns the exclusive rights to its AMERICAN EAGLE OUTFITTERS, mark which it uses in connection with its retail apparel business, targeting young clientele ages 15-25.
Complainant holds service mark registrations with the United States Patent and Trademark Office (“USPTO”) for its AMERICAN EAGLE OUTFITTERS mark (Reg. No. 1,893,331, issued May 9, 1995).
Respondent registered the disputed domain name on January 17, 2011.
The disputed domain name resolves to website featuring a coupon for Complainant’s business, commercial links advertising coupons which are unrelated to Complainant, a link to Complainant’s official site and a search bar.
Coupons are routinely used by Complainant in connection with its sale of American Eagle branded goods.
Respondent’s <americaneagleoutfitterscoupons.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark.
Respondent has not sought nor been granted permission to use Complainant's American Eagle mark in any way, and there is also no evidence that Respondent is commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <americaneagleoutfitterscoupons.com>.
Respondent registered and uses the <americaneagleoutfitterscoupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its AMERICAN EAGLE OUTFITTERS service mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations). This is true without regard to whether Complainant has rights in its mark in the country of residence of Respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of ¶ 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <americaneagleoutfitterscoupons.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS service mark. The disputed domain name contains Complainant’s entire AMERICAN EAGLE OUTFITTERS mark, adds the generic term “coupon,” removes the spaces from the terms in the mark, and adds the generic top-level domain (“gTLD”) “.com.” These differences are insufficient to distinguish the domain name from the mark under the Policy. 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 is confusingly similar to the complainant’s mark.
Our conclusion respecting confusing similarity is bolstered by the fact that the generic term “coupons,” which has been added to Complainant’s mark in forming the contested domain name, is related to the operation of Complainant’s business. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the generic term “assurance,” to a complainant’s mark failed sufficiently to differentiate the resulting domain name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to that complainant’s business).
Therefore, the Panel finds Respondent’s <americaneagleoutfitterscoupons.com> domain name to be confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <americaneagleoutfitterscoupons.com> domain name. Once a complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to a respondent under Policy ¶ 4(a)(ii) to demonstrate its rights to or legitimate interests in a contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a prima facie case under this head of the Policy. Because Respondent has failed to respond to the Complaint filed in this proceeding, we may accept as true Complainant’s allegations that Respondent does not have rights to or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint filed under the Policy).
We will nonetheless examine the evidence before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We first observe that Complainant asserts, and Respondent does not deny, that Respondent has not been authorized to use the AMERICAN EAGLE OUTFITTERS service mark, nor is there any evidence in the record to indicate that Respondent has been commonly known by the contested domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Yi Luo,” which does not resemble the contested domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <americaneagleoutfitterscoupons.com> domain name so as to have established that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that 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 a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next consider that Complainant alleges, without objection from Respondent, that Respondent uses the disputed domain name to redirect Internet users to a website offering coupons for Complainant’s products, as well as links for other coupons, a link to Complainant’s official website and a commercial search field. In the circumstances here presented, we may comfortably presume that Respondent profits from this arrangement, whether from the receipt of click-through fees or otherwise, owing to the visits of Internet users to the website resolving from the contested domain and its featured links. This is not a bona fide use of the disputed domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or a fair use under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a 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 that complainant’s customers, presumably receiving “click-through fees” in the process); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or whether that respondent is itself commercially profiting from the click-through fees).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent apparently uses the disputed domain name to obtain click-through or similar fees from the links displayed at the website resolving from the contested domain name. Because of the link to Complainant’s official website and the display of one of Complainant’s coupons at the disputed domain, Internet users will likely become confused as to the possibility of an affiliation between Complainant and Respondent. This risk of confusion created by Respondent in an attempt to gain commercially is evidence of bad faith registration and use of the disputed domain name 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 The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that a respondent’s use of a disputed domain name to maintain a pay-per-click site displaying links unrelated to the business of a complainant and to generate click-through revenue suggested bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <americaneagleoutfitterscoupons.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 11, 2011
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