Retail Royalty Company and AEO Management Co. v. Vendtex, LLC
Claim Number: FA1202001428508
Complainant is Retail Royalty Company and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Vendtex, LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aedesignerclothing.com>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2012; the National Arbitration Forum received payment on February 7, 2012.
On February 8, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <aedesignerclothing.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2012 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@aedesignerclothing.com. Also on February 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <aedesignerclothing.com> domain name is confusingly similar to Complainant’s AE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <aedesignerclothing.com> domain name.
3. Respondent registered and used the <aedesignerclothing.com> 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 both subsidiaries of American Eagle Outfitters, Inc. Therefore, the Panel will treat both Complainants as a single Complainant for the remainder of this decision. Complainant designs, markets, and sells clothing and accessories online under its AE.COM mark. Complainant owns the <ae.com> domain name, which it uses to host its commercial website. Complainant also owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its AE.COM (Reg. No. 2,737,433 registered July 15, 2003).
Respondent, Vendtex, LLC, registered the <aedesignerclothing.com> domain name on December 15, 2011. The disputed domain name resolves to a website that features Complainant’s clothing and accessories and allows Internet users to purchase the clothing through a third party, eBay.com.
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.
Complainant holds a trademark registration with the USPTO for its AE.COM mark (Reg. No. 2,737,433 registered July 15, 2003). Respondent resides or operates in the United States. In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panels found that a USPTO trademark registration is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). In light of these facts and precedent, the Panel determines that Complainant owns rights in its AE.COM mark under Policy ¶ 4(a)(i).
Respondent’s <aedesignerclothing.com> domain name combines Complainant’s AE.COM mark with the descriptive terms “designer” and “clothing.” In Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), and Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panels held that the addition of descriptive terms failed to remove a disputed domain name from the realm of confusing similarity. The Panel agrees with these prior panels and concludes that Respondent’s <aedesignerclothing.com> domain name is confusingly similar to Complainant’s AE.COM mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <aedesignerclothing.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel 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). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel 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. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
As Respondent did not respond to this case, Respondent did not present any evidence that it is commonly known by the <aedesignerclothing.com> domain name. Respondent is not affiliated with Complainant and Complainant did not license Respondent to use Complainant’s AE.COM mark. The WHOIS information identifies “Vendtex, LLC” as the registrant of the disputed domain name, which does not have any nominal association with the <aedesignerclothing.com> domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels concluded that a respondent is not commonly known by a disputed domain name if the respondent did not present any evidence of such a fact, the respondent is not affiliated with the complainant, and the WHOIS information was not similar to the disputed domain name. Based on the facts in the record, the Panel holds that Respondent is not commonly known by the <aedesignerclothing.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s <aedesignerclothing.com> domain name resolves to a website that contains Complainant’s AE.COM mark, Complainant’s company name, and images of Complainant’s clothing and accessories. The resolving website allows Internet users to purchase Complainant’s products through a third party, eBay.com. Respondent likely receives affiliate fees from eBay.com, and the sale of Complainant’s products directly competes with Complainant. In Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002), and Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), the panels held that the sale of a complainant’s goods at a resolving website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel concludes that Respondent’s use of the <aedesignerclothing.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent registered and uses the <aedesignerclothing.com> domain name for the purpose of receiving affiliate fees by diverting Internet users to a third party, eBay.com, that sells Complainant’s clothing and accessories. Respondent’s redirection of Internet users to a website that sells Complainant’s products necessarily disrupts Complainant’s business. In Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), the panels determined that a respondent’s registration and use of a disputed domain name to sell a complainant’s products disrupts a complainant’s business, which is evidence of bad faith. Consequently, the Panel concludes that Respondent registered and uses the <aedesignerclothing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent registered the <aedesignerclothing.com> domain name because the disputed domain name is confusingly similar to Complainant’s AE.COM mark and creates the impression that Respondent’s resolving website is affiliated with Complainant. Respondent commercially profits from this misperception by receiving an affiliate fee when Internet consumers use Respondent’s website to purchase Complainant’s products from eBay.com. In Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000), and Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003), the panels found that a respondent’s attempt to create confusion as to a complainant’s affiliation with the disputed domain name in order to commercially benefit from the unauthorized sale of the complainant’s products evidence bad faith registration and use. As the Panel finds that Respondent commercially benefits by creating confusion as to Complainant’s affiliation with Respondent, the Panel concludes that Respondent registered and uses the <aedesignerclothing.com> domain name under Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) is 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 <aedesignerclothing.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 20, 2012
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