Retail Royalty Company, and AEO Management Co. v. Modern Empire Internet Ltd.
Claim Number: FA1103001378458
Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Modern Empire Internet Ltd (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seventyseven.com>, registered with Fabulous.com Pty Ltd.
Each of 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 a Panelist in this proceeding.
Hon. James A. Carmody, Hon. Charles K. McCotter, Jr., and Terry F. Peppard, Esq., chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2011; the National Arbitration Forum received payment on March 17, 2011.
On March 17, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <seventyseven.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.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 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@seventyseven.com. 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.
A timely Response was received by the National Arbitration Forum and determined to be complete on April 8, 2011.
On April 11, 2011, the National Arbitration Forum received from Complainant an Additional Submission in compliance with the requirements of the Policy. On April 15, 2011, the National Arbitration Forum received from Respondent an Additional Submission likewise in compliance with the requirements of the Policy.
On April 12, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. James A. Carmody, Hon. Charles K. McCotter, Jr., and Terry F. Peppard, Esq., chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends, among other things, that:
Complainant designs and markets clothing, accessories and footwear targeting newborn to 25 year-olds under the mark 77, which are sold at its American Eagle Outfitters retail stores, its 77kids retail stores, and on its website <ae.com>.
Complainant 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 continuously sold products under the 77 mark.
Those sales are part of Complainant's worldwide sales over the past ten years, which have exceeded USD $20 Billion.
Complainant has also spent millions of dollars in advertising and promoting the sale goods and services under its 77 mark.
Complainant also advertises the 77 mark on the Internet to draw its target consumers to its <ae.com> website.
One of the hallmarks of Complainant's marketing is its use of the 77 mark as a design element on signature merchandise.
As a result of such extensive use and promotion, the 77 mark has acquired a high degree of public recognition, fame and distinctiveness as a symbol of the source of high quality goods and services offered by Complainant, and it embodies valuable reputation and good will belonging to Complainant.
Complainant owns U.S. trademark registrations on file with the United States Patent and Trademark Office ("USPTO") for the 77 mark in connection with clothing, accessories, and retail and online services.
The domain name <seventyseven.com> is visually and audibly identical to and fully incorporates Complainant's federally registered 77 mark.
The <seventyseven.com> domain name is confusingly similar to Complainant's 77 mark.
Respondent's website at <seventyseven.com> is a click-through portal that includes links not only to Complainant's Internet website, but also to the websites of Complainant's business competitors.
Because Respondent's <seventyseven.com> domain name so resembles Complainant's 77 mark, the use of that domain name by Respondent is likely to cause confusion among Internet users by creating the erroneous impression that Respondent's website is that of Complainant, or that it is endorsed by, or is sponsored by, or is connected in some way with Complainant.
As a result, the registration of the domain name <seventyseven.com> by Respondent is injurious to Complainant.
Respondent knew of Complainant's 77 mark at the time it registered the domain <seventyseven.com>, as is evidenced by the fact that it includes a link to Complainant’s official website.
Respondent's adoption, registration, and use of the challenged domain name are without the license or permission of Complainant.
There is no evidence that Respondent is commonly known by the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent's sole motivation in registering the <seventyseven.com> domain name was the purpose of diverting customers seeking Complainant's legitimate Internet website so to misdirect customers and to earn monies earned through customers "clicking-through" the links on Respondent’s webpage to the webpages of other retailers, including business competitors of Complainant.
Respondent's actions have disrupted Complainant's business.
Respondent both registered and uses its <seventyseven.com> domain name in bad faith.
B. Respondent
Respondent contends, among other things, that:
There is no visual similarity between the mark “77” and the written words “seventyseven” in the disputed domain name.
The digits “77” are merely representative of a popular “lucky number” which is commonly employed in commerce for a wide variety of goods, including clothing.
Complainant has not identified a right in the 77 mark which was owned by it at the time the domain name in issue was registered by Respondent.
There is no basis for supposing that Respondent, a Hong Kong organization with a Cantonese principal, was aware of Complainant or its claimed 77 mark when Respondent acquired the domain name on December 11, 2007.
Respondent is under no duty of notice of Complainant’s asserted US national trademark registration.
Respondent’s use of the domain name in connection with clothing is senior to the mark registration asserted by Complainant.
Respondent’s use of the disputed domain name in no way resembles any website or advertisement produced by Complainant, and there is no evidence that Respondent has attempted to pass itself off as Complainant.
There is nothing in Respondent’s registration and use of the domain name to indicate that Respondent was or is targeting Complainant.
It is irrational for Complainant to suggest that Respondent registered the <seventyseven.com> domain name to “divert” Internet users seeking information about, or to purchase the goods of, Complainant under its alleged 77 mark given that Complainant acknowledges that it operates a relevant website only under the “<ae.com> domain name.
Complainant effectively attempts to impute bad faith to the operation of automated systems which attempt to match domain names to relevant subject matter (in this case, clothing) for the benefit of Internet users.
The automated system’s selection of the subject matter of clothing was likely triggered by the fact that many clothing sellers use variations of the number 77 in marketing their wares.
Complainant has failed to show that the disputed domain name was registered or is being used in bad faith.
C. Additional Submissions
In its Additional Submission, Complainant contends, inter alia, that:
Complainant's documentation for its registration of the 77 mark shows a “first use” date in 2004, which is well before the <seventyseven.com> domain name was registered.
Respondent does not deny that it and its predecessor registrant were aware of Complainant’s rights in its 77 mark at the time that the offending domain name was registered.
Complainant has made sales directly to Hong Kong (including of goods bearing the 77 mark) from at least 2004.
Respondent has identified no legitimate interest that it or its predecessor had, or
now has, in the <seventyseven.com> domain name.
Respondent admits that the domain has been used as an "automatic advertising" site, but provides no explanation as to why the <seventyseven.com> webpage, from the time of filing of the Complaint, has included links to the website of Complainant as well as to its 77kids website, in addition to links to the websites of Complainant's direct competitors.
Respondent's attempt to attract Internet users to the <seventyseven.com> domain in order to trade off of Complainant's 77 mark cannot be disputed.
Respondent has been involved in fifteen separate UDRP proceedings in which it was found to have registered and used a domain name in bad faith.
In its Additional Submission, Respondent contends, inter alia, that:
While Complainant has provided evidence of its current commercial use of its 77 mark, it has failed to show use of an unadorned “77” as a mark prior to the date of its federal mark registration.
The same is true of Complainant’s attempts to fill in the gap as to common law rights required to show ownership of a relevant trademark prior to the date of its federal mark registration.
Complainant is conflating evidence of its rights in different marks at different times to obscure its lack of rights in a relevant mark predating Respondent’s domain name registration.
A “first use” allegation in a US trademark application is a mere allegation, which is not examined by the USPTO.
Complainant’s reliance on references to “first use” in its trademark application is therefore not evidence of the underlying facts.
Moreover, time of use alone is insufficient to indicate that a common law mark, if one exists, has achieved secondary meaning, so as to give it protectable rights against other users of the same or a similar mark.
Complainant has therefore failed to satisfy its burden of proof on this issue.
In particular, while Complainant has provided general information about its sales of products, it has not provided any evidence specific to the claimed 77 mark with regard to sales volume, advertising, consumer recognition or media recognition demonstrating secondary meaning in the mark for any time prior to its federal mark registration.
1. Complainant has rights in its 77 trademark by virtue of its registration of the mark with a national trademark authority, the USPTO;
2. Complainant has failed adequately to prove that its rights in the 77 trademark predate the registration of Respondent’s <seventyseven.com> domain name.
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."
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.
In this vigorously contested proceeding, the parties have raised a broad array of factual, legal and policy issues. Among the many contentions advanced by the parties, we are persuaded that one in particular determines the outcome. This is the question of bad faith, which is treated in Policy ¶ 4(a)(iii).
As with the other elements of the Policy which are examined in UDRP proceedings, Complainant bears the burden of proof on the question whether Respondent has registered and is using the contested domain name in bad faith. If Complainant fails of this burden, its claim to relief as to the disputed domain name likewise fails. See, for example, Rogers Cable Inc. v. Arran Raja Lal, D2001-0201 (WIPO Mar. 30, 2001).
Thus while we are satisfied that Complainant has protectable rights in its 77 trademark by reason of its registration of the mark with a national trademark authority, the USPTO, because we are also satisfied that Complainant has fallen short in its efforts to establish that Respondent has proceeded in bad faith in connection with the registration and use of the <seventyseven.com> domain name, we elect to discuss that issue alone, treatment of the other two heads of Policy ¶ 4(a) being unnecessary. See Post.Com Ltd. v. Neilson, D2002-0690 (WIPO Sept. 17, 2002):
In this Panel’s view, the Complainant has not established … that the Domain Name was registered by the Respondent in bad faith.... In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.
To the same effect, see Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., D2010-0470 (WIPO May 19, 2010).
We begin our examination of the question of bad faith by noting that it is well accepted that, absent exceptional circumstances, where a registrant registers a domain name before a trademark right is established, it cannot be said that the registration of the domain name was in bad faith because the registrant could not have contemplated a complainant’s then non-existent rights. See John Ode dba Optimum Digital Enterprises v. Intership Ltd, D2001-0074 (WIPO Jan. 5, 2001).
Here Respondent acquired the contested domain name on December 11, 2007. Of the several trademarks proffered by Complainant as pertinent to our inquiry, the one we judge relevant to this proceeding is that for the “77” mark, which was registered with the USPTO, effective May 26, 2009, as Registry No. 3,628,711.
Complainant’s registration of its 77 trademark therefore postdates the registration of the competing domain name. This fact, standing alone, might in ordinary circumstances doom Complainant’s UDRP claim.
However, it has been held by other panels that a complainant’s rights in a registered mark date, not from the registration date, but from the date of filing of the related application for registration. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002). This proposition proceeds on the evident basis that the filing of a mark registration application with a competent national trademark authority gives notice to domain registrants of a complainant’s rights in a mark. The relevant date of filing as to the 77 mark registration is March 22, 2007.
Complainant may thus draw comfort from the fact that the date of filing of its trademark registration application with the USPTO came before the registration of Respondent’s domain name. However, we must also consider that the filing date of Complainant’s trademark registration application was separated in time from the registration of Respondent’s domain name by only a matter of several months, taken together with the fact that Complainant is a United States company while Respondent does business half a world away in Hong Kong. These circumstances require that Complainant demonstrate by concrete proof that Respondent knew or had strong reason to know of its 77 mark rights at the time the domain name was registered. See, on the point, the extensive discussion of relevant considerations in uwe GMbH v. Telepathy, Inc., D2007-0261 (WIPO May 28, 2007):
The Complainant’s most difficult hurdle is to establish that the Respondent knew of its mark when the disputed domain name was registered. Some panels (although not all) have found that it is enough if a respondent ought to have known of a complainant’s mark, when the disputed domain name is registered. (For example, in Moari Television Service v. Damien Sampat, WIPO Case No. D2005-0524, cited by the Complainant, the panel stated that a finding of bad faith can be made when the respondent “knew or should have known of the registration and use of the trademark prior to registering the domain”, and cited other panel decisions to similar effect.)
However the Panel finds that, even on this approach to paragraph 4(a)(iii) of the Policy, which is more favorable to the Complainant, the Complainant does not succeed. The reasons for this are as follows.
Evidence that the Respondent should have been aware of the Complainant might be drawn from a number of sources. There might be such evidence if the Complainant was well-known in the Respondent’s jurisdiction; was well-known in a field or jurisdiction in which the Respondent operates; the mark was distinctively associated with the Complainant; or if it appears, on a common-sense approach and the surrounding facts, that the similarity between the domain name and mark was deliberately created. Here, there is insufficient evidence of this kind.
The Complainant argued that it is well-known in its field, and that it does business in a number of jurisdictions, including the Respondent’s (the United States of America). The Complainant gave little evidence to support these contentions. The Complainant only provided copies of two pages from its own website. Those pages contained brief statements of a marketing nature, and (in effect) reiterating its claims that it has been in business for 50 years and is the world’s leading supplier of solariums and health equipment. The Complainant provided no other evidence of its operations. Neither did it provide evidence of its business in the United States of America or otherwise, such that the Respondent should have been aware of it.
There is also little evidence that the Respondent should have been aware of the Complainant because of the field in which the Respondent operates. The Respondent speculates in domain names, and gave evidence that it registered the disputed domain name at the same time as a large number of other 3-letter domains names. The evidence of third-party interest in the letters “uwe” makes it more difficult for a finding that the Respondent was aware specifically of the Complaint’s mark when the disputed domain name was registered.
We find the circumstances described in uwe GMbH to be remarkably similar to those presented here. Complainant has made earnest contentions in the direction of establishing that Respondent should have known of its 77 mark when the contested domain name was registered. However, the proof submitted in support of those contentions is thin and unconvincing. We are therefore obliged to conclude that Complainant has failed to demonstrate that Respondent registered the disputed <seventyseven.com> domain name in bad faith, within the meaning of Policy ¶ 4(a)(iii), in that it knew or should have known of Complainant’s rights in its 77 mark at the time of such registration.
Finally, the panel has carefully considered Respondent's contention that the <seventyseven.com> domain name is not confusingly similar to Complainant's "77" trademark. This assertion is not without some support in the decisions of other UDRP panels. However, we are of the view that it is not necessary to address this issue, so we decline to do so.
Accordingly, Complainant having failed to establish a vital element required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, DENIED.
Terry F. Peppard, Panel Chair
Hon. James A. Carmody, Hon. Charles K. McCotter, Jr., Panelist
Dated: April 21, 2011
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