Retail Royalty Company and AEO Management Co. v. americaneaglekids
Claim Number: FA1107001397714
Complainant is Retail Royalty Company and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of WOOD, HERRON & EVANS, LLP, Ohio, USA. Respondent is americaneaglekids (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneaglekids.us>, registered with GoDaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the Forum received a hard copy of the Complaint on July 8, 2011.
On July 9, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <americaneaglekids.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 20, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 9, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <americaneaglekids.us> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark.
2. Respondent does not have any rights or legitimate interests in the <americaneaglekids.us> domain name.
3. Respondent registered and used the <americaneaglekids.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Retail Royalty Company, and Complainant, AEO Management Co., are related companies known collectively as “American Eagle Outfitters.” For the purposes of this decision, both parties will be collectively referred to as Complainant. Complainant markets and sells casual clothing, accessories, and footwear. Complainant owns the AMERICAN EAGLE mark which it uses to sell its goods to a target audience of 15 to 25 year-olds. Complainant also owns the 77KIDS mark, used to sell and advertise its line of goods for 0-14 year-olds. Complainant holds a number of trademark registrations for its AMERICAN EAGLE and 77KIDS marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,943,730 registered December 26, 1995) and (e.g., Reg. No. 3,669,059 registered August 18, 2009) respectively.
Respondent, americaneaglekids, registered the <americaneaglekids.us > domain name on June 12, 2011. The disputed domain name contains links to <amazon.com>, as well as unauthorized information regarding Complainant’s business in the clothing and apparel industry.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant states that it has rights in the AMERICAN EAGLE and 77KIDS marks. In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panel found that trademark registration with the USPTO was adequate to establish rights pursuant to UDRP ¶ 4(a)(i). See also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to [UDRP] ¶ 4(a)(i).”). Here, Complainant holds a number of trademark registrations with the USPTO for its AMERICAN EAGLE mark (e.g., Reg. No. 1,943,730 registered December 26, 1995) and its 77KIDS mark (e.g., Reg. No. 3,669,059 registered August 18, 2009). Thus, the Panel concludes that Complainant has demonstrated its rights in both the AMERICAN EAGLE and 77KIDS marks through their trademark registrations according to Policy ¶ 4(a)(i).
Complainant also states that the <americaneaglekids.us> domain name is confusingly similar to its AMERICAN EAGLE mark. The disputed domain name combines both the AMERICAN EAGLE and 77KIDS marks, removes the space between the words of the AMERICAN EAGLE mark, deletes the number “77,” and adds the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that combining two of Complainant’s marks does not sufficiently distinguish the disputed domain name. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). The Panel also finds that deleting a space and adding a ccTLD does not discourage a finding of confusing similarity. See 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 UDRP ¶ 4(a)(i).”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that the addition of the country-code “.us” fails to add any distinguishing characteristic to a disputed domain name). Finally, the Panel decides that removing the “77” portion from Complainant’s mark does not adequately differentiate the disputed domain name. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). Thus, the Panel holds that Respondent’s <americaneaglekids.us> domain name is confusingly similar to Complainant’s AMERICAN EAGLE and 77KIDS marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant claims that Respondent lacks rights and legitimate interests in the <americaneaglekids.us> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated, “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].” Here, Complainant makes a prima facie case. Respondent failed to respond to the Complaint, allowing the Panel to assume that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). 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 first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before making a holding.
Complainant is not aware of any trademark or intellectual property rights held by Respondent in the <americaneaglekids.us> domain name and there is no evidence in the record that Respondent owns any service marks or trademarks reflected in the disputed domain name. Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant asserts that it has not granted permission to Respondent to use its AMERICAN EAGLE or 77KIDS marks in the disputed domain name. Although the WHOIS information identifies Respondent as “American Eagle Kids,” the Panel is unable to find any affirmative evidence that Respondent is commonly known by the disputed domain name and concludes that Respondent, in fact, is not commonly known by <americaneaglekids.us> pursuant to Policy ¶ 4(c)(iii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
Respondent’s <americaneaglekids.us> domain name resolves to a website which includes links to <amazon.com> and erroneous materials and content regarding Complainant’s retail business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to a commercial website and provide unauthorized information about Complainant’s business is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to [UDRP] ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s use of the <americaneaglekids.us> domain name disrupts its business. The resolving website includes potentially competing links for a variety of goods at the <amazon.com> website. The Panel finds that Respondent’s use of the disputed domain name in order to redirect Internet users to other commercial websites is disruptive to Complainant’s business and evidences bad faith under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to [UDRP] ¶¶ 4(b)(iii) [and] (iv).”).
The Panel infers that Respondent likely collects click-through fees from the previously mentioned links to <amazon.com>. Complainant claims that Respondent’s use of two of its registered marks in the disputed domain name creates a likelihood of confusion for Internet users as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and featured content on the resolving website. Respondent tries to commercially benefit from this confusion by collecting click-through fees. The Panel concludes that registration and use of the <americaneaglekids.us> domain name for such a purpose constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
The Panel concludes that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americaneaglekids.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 26, 2011
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