Retail Royalty Company, and AEO Management Co. v. Gabriel Kollar / None
Claim Number: FA1103001378098
Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of WOOD, HERRON & EVANS, LLP, Ohio, USA. Respondent is Gabriel Kollar / None (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneagleshoes.net>, registered with Direct Internet Solutions Pvt. Ltd., d/b/a Publicdomainregistry.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2011; the National Arbitration Forum received payment on March 15, 2011.
On March 16, 2011, Direct Internet Solutions Pvt. Ltd., d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <americaneagleshoes.net> domain name is registered with Direct Internet Solutions Pvt. Ltd., d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. 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 March 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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@americaneagleshoes.net. Also on March 18, 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 April 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americaneagleshoes.net> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark.
2. Respondent does not have any rights or legitimate interests in the <americaneagleshoes.net> domain name.
3. Respondent registered and used the <americaneagleshoes.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Retail Royalty Company and AEO Management Co., are related companies and will be referred to collectively as Complainant in this proceeding. Complainant designs, markets, and sells clothing, accessories, basics, and footwear under its AMERICAN EAGLE mark. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AMERICAN EAGLE mark (e.g., Reg. No. 2,994,962 issued September 13, 2005).
Respondent registered the <americaneagleshoes.net> domain name on February 18, 2011. The disputed domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the footwear industry and also provides information about Complainant’s footwear products.
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.
Previous panels have determined that a trademark registration with the USPTO is sufficient to establish rights in a mark, even if the respondent does not reside in the United States. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). As Complainant owns numerous trademark registrations with the USPTO for its AMERICAN EAGLE mark (e.g., Reg. No. 2,994,962 issued September 13, 2005), the Panel concludes Complainant has established rights under Policy ¶ 4(a)(i).
Past panels have held that a disputed domain name is confusingly similar to a complainant’s mark if the disputed domain name contains the complainant’s entire mark and simply removes a space, adds a descriptive term, and adds the generic top-level domain (“gTLD”) “.net.” See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Based on this precedent, the Panel determines that Respondent’s <americaneagleshoes.net> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark pursuant to Policy ¶ 4(a)(i), as the disputed domain name removes the space separating the terms of the mark, adds the descriptive term “shoes,” and adds the gTLD “.net.”
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <americaneagleshoes.net> domain name. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Prior panels have established that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant has not provided permission to use the mark, and the respondent fails to provide any evidence of such a fact. 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). In this case, the WHOIS information identifies “Gabriel Kollar / None,” which is not similar to the <americaneagleshoes.net> domain name. Complainant alleges that Respondent is not licensed or authorized to use the AMERICAN EAGLE mark. Respondent has failed to provide any evidence, and the Panel fails to find any evidence in the record, that would support a finding of that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <americaneagleshoes.net> domain name pursuant to Policy ¶ 4(c)(ii).
Past panels have concluded that a respondent’s use of a disputed domain name to provide hyperlinks to a complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)). The <americaneagleshoes.net> domain name resolves to a website that contains three hyperlinks to Complainant’s competitors and one hyperlink to Complainant itself. The website also contains language, presumably written by Respondent, that discusses Complainant and Complainant’s products. Based on Respondent’s use of the disputed domain name, the Panel finds Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
When determining whether a respondent has registered and used a disputed domain name in bad faith under Policy ¶ 4(b)(iii), previous panels have focused on whether the website resolving from the disputed domain name contains hyperlinks to competitors of Complainant. 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant has provided screen shots of the website resolving from the <americaneagleshoes.net> domain name. According to the screen shots, the hyperlinks on the resolving website resolve to Complainant’s website and three of Complainant’s competitors. The Panel determines Respondent’s use of the <americaneagleshoes.net> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Prior panels have held that a respondent’s use of a disputed domain name to provide competing hyperlinks, from which the respondent likely receives click-through fees, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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). Respondent’s <americaneagleshoes.net> domain name resolves to a website that contains hyperlinks to Complainant and Complainant’s competitors. The resolving website also contains information about Complainant. The Panel presumes that Respondent receives click-through fees from the aforementioned hyperlinks. The Panel also determines that Respondent is attempting to create confusion as to Complainant’s affiliation with the website by using a confusingly similar domain name and providing information about Complainant. Therefore, the Panel concludes that Respondent’s registration and use is evidence of bad faith under Policy ¶ 4(b)(iv).
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 <americaneagleshoes.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 13, 2011
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