Retail Royalty Company and AEO Management Co. v. Ed Conroy
Claim Number: FA1109001408551
Complainant is Retail Royalty Company and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Ed Conroy (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeriestorecoupons.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 September 22, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 22, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <aeriestorecoupons.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 September 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@aeriestorecoupons.com. Also on September 22, 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 October 19, 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 designs and markets casual, current clothing, accessories, basics, and footwear, including loungewear, intimate apparel, and personal care products under its AERIE mark.
Complainant owns registrations on file with the United States Patent and Trademark Office (“USPTO”) for its AERIE trademark (including Reg. No. 3,419,683, registered April 29, 2008).
Respondent registered the <aeriestorecoupons.com> domain name on September 7, 2011.
The disputed domain name resolves to a website featuring hyperlinks to both Complainant’s website and those of third-parties unrelated to Complainant.
The same resolving website also provides unauthorized and expired coupons to Complainant’s stores.
Respondent’s <aeriestorecoupons.com> domain name is confusingly similar to Complainant’s AERIE mark.
Respondent is not affiliated with, licensed by or in privity with Complainant.
Complainant has not given Respondent permission to use the Aerie mark.
There is 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 <aeriestorecoupons.com>.
Respondent registered and uses the <aeriestorecoupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 UDRP 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 rights in its AERIE trademark under 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 registration); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <aeriestorecoupons.com> domain name contains Complainant’s AERIE trademark, and merely attaches the generic terms “store” and “coupons,” which relate to aspects of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These additions made to the mark in forming the contested domain name do not distinguish the domain from the mark under the standards of the Policy. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporated the VIAGRA mark in its entirety, and deviated only by the addition of the word “bomb,” the domain name was rendered confusingly similar to a complainant’s mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” was insufficient to differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <aeriestorecoupons.com> domain name. Once Complainant makes out a prima facie case in support of this allegation, the burden shifts to Respondent to prove that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that, under Policy ¶ 4(a)(ii), a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to that respondent to show that it does have such rights or interests); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 sufficient prima facie case under this head of the Policy. Owing to Respondent’s failure to respond to the Complaint, we may therefore presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record 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 disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not affiliated with, licensed by, or in privity with Complainant, that Complainant has not given Respondent permission to use the Aerie mark, and that there is no evidence that Respondent is commonly known by the disputed domain name. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Ed Conroy,” which does not resemble the <aeriestorecoupons.com> domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in that domain pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in that domain, where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s <aeriestorecoupons.com> domain name resolves to a website that contains hyperlinks to both Complainant’s website and the websites of enterprises unrelated to Complainant, and that the same resolving website provides unauthorized and expired coupons to Complainant’s. In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees tied to the visits of Internet users to the websites resolving from the sponsored links. We conclude from all of this that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <aeriestorecoupons.com> domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where that respondent used it to operate a website featuring links to websites featuring goods and services unrelated to the business of a complainant).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the contested <aeriestorecoupons.com> domain name in the manner alleged in the Complaint must create confusion among Internet users as to the possibility of Complainant’s affiliation with that domain name. Because Respondent evidently attempts to gain commercially from this confusion, we conclude that Respondent has registered and uses the domain name in bad faith 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 evidence of bad faith under Policy ¶ 4(b)(iv)); see also 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 to websites 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)).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under 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 <aeriestorecoupons.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard , Panelist
Dated: October 27, 2011
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