Retail Royalty Company, and AEO Management Co. v. J Smithers
Claim Number: FA1104001384634
Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is J Smithers (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneaglediscountcodes.com>, registered with GoDaddy.com.
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 April 19, 2011; the National Arbitration Forum received payment on April 19, 2011.
On April 19, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <americaneaglediscountcodes.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 April 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@americaneaglediscountcodes.com. Also on April 20, 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 May 18, 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 markets and sells casual clothing and accessories.
Complainant owns the AMERICAN EAGLE mark and has sold merchandise and advertised its retail stores under the mark since 1977.
Complainant holds trademark registrations for the AMERICAN EAGLES mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,994,962, issued September 13, 2005).
Respondent registered the <americaneaglediscountcodes.com> domain name on April 7, 2011.
The disputed domain name resolves to an online directory with links to websites providing coupons, as well as to sites directly competing with Complainant’s retail business.
The resolving website features images taken from Complainant’s website and includes text describing Complainant.
Respondent’s <americaneaglediscountcodes.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not affiliated with Complainant, and has not been licensed to use the AMERICAN EAGLE trademark in the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <americaneaglediscountcodes.com>.
Respondent registered and uses the <americaneaglediscountcodes.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 trademark 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 established its rights in the AMERICAN EAGLE trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <americaneaglediscountcodes.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark. The disputed domain name incorporates Complainant’s mark in its entirety, and only differs by adding the descriptive words “discount” and “code,” which relate to aspects of Complainant’s business, and by adding the generic top-level domain name (“gTLD”) “.com” and deleting the space between the terms of the mark.
These alterations of the mark in forming the contested domain name do not distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that a respondent’s domain names, which incorporated a complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).
Similarly, the deletion of a space and the addition of a gTLD does not factor into the Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i).
The Panel therefore concludes that Respondent’s contested domain name <americaneaglediscountcodes.com> is confusingly similar to Complainant’s AMERICAN EAGLE trademark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights to and legitimate interests in the <americaneaglediscountcodes.com> domain name. Complainant is obliged to make out a prima facie case in support of this assertion, whereupon the burden shifts to Respondent to show that it has such rights or legitimate interests. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007):
Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.
Complainant has made out a prima facie showing in support of its allegations on the point of Respondent’s rights to and legitimate interests in the contested domain name. Respondent, for its part, has failed to submit a response to the Complaint filed in this proceeding. We are therefore free to conclude that Respondent has waived any claim to rights to or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent had failed to invoke any circumstance which could demonstrate its rights to or legitimate interests in the domain name).
Nonetheless, we will examine the record before us, in light of the 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 contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent is not affiliated with Complainant and has not been licensed to use the AMERICAN EAGLE mark in the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “J. Smithers,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the <americaneaglediscountcodes.com> domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply);
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 and so had no rights to or legitimate interests in those domains under Policy ¶ 4(c)(ii), 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 note that Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a directory website which features third-party links, some of which resolve to commercial sites in direct competition with Complainant’s retail clothing business. In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees from the visits of Internet users to the websites resolving from these links. Respondent’s use of the contested in the manner alleged is not 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent used a disputed domain name only to offer links to a variety of third-party websites, it was not using a domain name in connection with 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 thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent registered and uses the disputed domain name to host a website with various links, including links to Complainant’s business competitors. Internet users intending to purchase Complainant’s clothing and accessories may instead find Respondent’s website and purchase similar goods from Complainant’s competitors. Such registration and use of the domain name is disruptive of Complainant’s business and is therefore evidence of bad faith on the part of Respondent under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the domain to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent uses the contested domain name, which is confusingly similar to Complainant’s AMERICAN EAGLE trademark, along with content related to Complainant’s business and images taken directly from Complainant’s website, to create a likelihood of confusion as to the possibility of Complainant’s sponsorship of the resolving website and featured links. Respondent likely receives click-through fees from the visits of Internet users to those links. Respondent thus tries to profit from the confusion it has created. This is evidence of bad faith registration and use of the contested domain name under 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 a respondent engaged in bad faith registration and use of a domain name by using one that was confusingly similar to a complainant’s mark to offer links to third-party websites that featured services similar to those offered by that complainant).
For these reasons, the Panel finds that Complainant has met the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <americaneaglediscountcodes.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 20, 2011
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