Retail Royalty Company and AEO Management Co. v. Private Whois aecoupons.net
Claim Number: FA1203001433844
Complainant is Retail Royalty Company and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Private Whois aecoupons.net (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aecoupons.net>, registered with Internet.bs Corp.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2012; the National Arbitration Forum received payment on March 9, 2012.
On March 14, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <aecoupons.net> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@aecoupons.net. Also on March 16, 2012, 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 April 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina(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 <aecoupons.net> domain name is confusingly similar to Complainant’s AE mark.
2. Respondent does not have any rights or legitimate interests in the <aecoupons.net> domain name.
3. Respondent registered and used the <aecoupons.net> 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 wholly-owned subsidiaries of American Eagle Outfitters, Inc. Therefore, they will be referred to jointly as “Complainant.” Complainant is the owner of multiple United States Patent and Trademark Office (“USPTO”) registrations for the AE mark (e.g., Reg. No. 2,216,789 registered January 12, 1999). Complainant uses its mark in connection with the marketing and sale of clothing and accessories, as well as offering coupons for these things.
Respondent, Private Whois aecoupons.net, registered the <aecoupons.net> domain name on April 12, 2011. The disputed domain name resolves to a website which purports to offer coupons for Complainant’s products but instead downloads software onto the Internet users’ computer when clicking on the link required to access the coupons.
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 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.”).
Complainant asserts that it has rights in the AE mark. Complainant contends that it uses the AE mark in connection with the marketing and sale of clothing, basics, and accessories and that Complainant has registrations through the USPTO for the AE mark (e.g., Reg. No. 2,216,789 registered January 12, 1999). Panels have previously found that the registration of a mark with a trademark authority, regardless of the location of the parties, is evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant has rights in the AE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <aecoupons.net> domain name is confusingly similar to the AE mark. Respondent fully-incorporates the AE mark into the disputed domain name and merely adds the descriptive term “coupons” and the generic top-level domain (“gTLD”) “.net” to create the disputed domain name. The Panel finds that Respondent’s addition of a descriptive term fails to bar the Panel from holding that the disputed domain name is confusingly similar. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel further determines that the addition of the gTLD “.net” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that Respondent’s <aecoupons.net> domain name is confusingly similar to Complainant’s AE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) by demonstrating its rights in the AE mark and the confusing similarity of the <aecoupons.net> domain name.
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant present a prima facie against Respondent before the burden to prove rights and legitimate interests shifts to Respondent. The Panel finds that Complainant has made a prima facie case in support of this finding and thus that the burden shifts now to Respondent to dispute these claims. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“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 Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel, however, is without the benefit of a Response from Respondent. Therefore, the Panel will make all inferences which are reasonable from the information available. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will still review the record under the Policy ¶ 4(c) factors, however, for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent is not affiliated with Complainant and has not been licensed or otherwise authorized to use the AE mark. Complainant argues also that Respondent does not have any service marks or trademarks that reflect the <aecoupons.net> domain name. The WHOIS record for the <aecoupons.net> domain name lists “Private Whois aecoupons.net” as the domain name registrant. Panels have found that, even where a WHOIS record suggests that a respondent is commonly known by the disputed domain name, the panel may find that the respondent is not commonly known by the disputed domain name if the other information on the record contradicts this. 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 City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). Therefore, the Panel finds that Respondent is not commonly known by the <aecoupons.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the <aecoupons.net> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that the <aecoupons.net> domain name resolves to a website which purports to offer coupons for Complainant’s products, but requires Internet users to click on a link to access the coupons. After clicking on the link, software is downloaded onto the Internet users’ computers. Therefore, the Panel finds that Respondent is not using the <aecoupons.net> domain name for either a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website,…[which] may annoy or harm the users in some way,…is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to demonstrate any semblence of 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 finds that Complainant satisfied Policy ¶ 4(a)(ii) by demonstrating Respondent’s lack of rights and legitimate interests in the <aecoupons.net> domain name.
Complainant argues that Respondent registered and is using the disputed domain name in order to take commercial advantage of Internet users’ mistakes as to the source, sponsorship, or affiliation of the disputed domain name. Complainant claims that the disputed domain name resolves to a website which purports to offer coupons for Complainant’s product but which actually requires Internet users to click on a link which causes a software download onto the Internet users’ computer. Complainant asserts that Respondent registered and is using the <aecoupons.net> domain name in order to attract Internet users to its website by implying an affiliation with Complainant given the confusing similarity of the disputed domain name and the purportedly-competing website. Complainant claims that Respondent is generating revenue from the operation of the <aecoupons.net> domain name. Therefore, the Panel finds that Respondent registered and is using the <aecoupons.net> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent caused confusion as to the source of the disputed domain name in order to take commercial advantage of Internet users’ mistakes regarding this confusion. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant also contends that, in light of the fame and notoriety of Complainant's AE mark, it is inconceivable that Respondent could have registered the <aecoupons.net> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant sufficiently demonstrated Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aecoupons.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina(Ret.), Panelist
Dated: April 26, 2012
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