Retail Royalty Company, and AEO Management Co. v. YangJie / Yang Jie
Claim Number: FA1205001441769
Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is YangJie / Yang Jie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneagleoutfitters.asia>, registered with eName Technology Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2012; the National Arbitration Forum received payment on May 1, 2012. The Complaint was submitted in both English and Chinese.
On May 1, 2012, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <americaneagleoutfitters.asia> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 May 9, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 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@americaneagleoutfitters.asia. Also on May 9, 2012, the Chinese language 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 June 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainants made the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainants are associated companies in a successful United States group of companies that designs, markets and sells casual current clothing, accessories and related products.
2. Complainants have rights in the AMERICAN EAGLE OUTFITTERS mark.
They have multiple United States Patent and Trademark Office (“USPTO”) registrations for the AMERICAN EAGLE OUTFITTERS mark (e.g., Reg. No. 1,893,331 registered May 9, 1995); Complainants also registered the AMERICAN EAGLE OUTFITTERS mark (Reg. No. 1,227,788 registered September 1, 2006) with the State Administration for Industry and Commerce (“SAIC”) of China.
3. Respondent registered the <americaneagleoutfitters.asia> domain name on March 30, 2012. It resolves to a website which displays links to competitors of Complainants and to other unrelated third parties.
Preliminary Issue: Language of the Proceedings
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Retail Royalty Company, and AEO Management Co. Complainants make no arguments regarding standing to be considered as a single entity. However, Complainants provide the Panel with evidence of their trademark registrations some of which, the Panel notes, list Complainant, Retail Royalty Company, as the rights holder. Complainants also provide evidence of Complainants’ resolving website, which the Panel notes includes the statement “© 2011 AEO Management Co. All Rights Reserved.”
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and it therefore treats them all as a single entity in this proceeding. However, for ease of reference, the Complainants will be collectively referred to as “Complainant.”
Discussion of the Issues
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark .Complainant asserts that it has rights in the AMERICAN EAGLE OUTFITTERS mark, which Complainant alleges it uses in connection with the design, market, and sale of clothing, accessories, and basics. Complainant provides evidence that it owns registrations for the AMERICAN EAGLE OUTFITTERS mark (e.g., Reg. No. 1,893,331 registered May 9, 1995) with the USPTO. Complainant also provides evidence of its registration of the AMERICAN EAGLE OUTFITTERS mark (Reg. No. 1,227,788 registered September 1, 2006) with the SAIC. Panels have previously held that the registration of a mark with a trademark authority demonstrates rights in the mark. See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that complainant has rights in the AMERICAN EAGLE OUTFITTERS mark pursuant to Policy ¶ 4(a)(ii).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the AMERICAN EAGLE OUTFITTERS trademarks relied on by Complainant .Complainant contends that the <americaneagleoutfitters.asia> domain name is confusingly similar to the AMERICAN EAGLE OUTFITTERS mark. Complainant argues that Respondent simply deleted the spaces from its mark and added the sponsored top-level domain (“sTLD”) “.asia” to create the disputed domain name. The Panel finds that these changes cannot negate a finding that is otherwise open on the evidence that a domain name is identical or confusingly similar to a trademark. See Acton Educ. Servs., Inc. v. Smith, FA 1238865 (Nat. Arb. Forum Jan. 26, 2009) (holding the <westcoastuniversity.asia> domain name to be identical to the WEST COAST UNIVERSITY mark because the deletion of spaces in the mark and the addition of the top-level domain “.asia” were irrelevant to a Policy ¶ 4(a)(i) determination). Accordingly, the Panel finds that the <americaneagleoutfitters.asia> domain name is identical to the AMERICAN EAGLE OUTFITTERS mark under Policy ¶ 4(a)(i).
Accordingly, Complainant has made out the first of the three elements that it must establish.
It is now well established that 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AMERICAN EAGLE OUTFITTERS mark and to use it in its domain name.
(b) Respondent has then decided to use the domain name so that it resolves to a website which displays links to competitors of Complainants and to other unrelated third parties;
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) Complainant also argues that Respondent is not commonly known by the <americaneagleoutfitters.asia> domain name.Complainant asserts that Respondent does not hold any trademark or service mark in the <americaneagleoutfitters.asia> domain name and Complainant claims that Respondent is not affiliated with, or licensed by, Complainant to be using the AMERICAN EAGLE OUTFITTERS mark. Additionally, Complainant provides evidence that the WHOIS record for the <americaneagleoutfitters.asia> domain name lists “YangJie / Yang Jie” as the domain name registrant. Panels have previously held that authorization by Complainant to use a mark and the WHOIS record are illustrative of whether or not a respondent is commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the <americaneagleoutfitters.asia> domain name pursuant to Policy ¶ 4(c)(ii) and therefore lacks rights and legitimate interests in the <americaneagleoutfitters.asia> domain name.
(e) Complainant also asserts that Respondent lacks rights and legitimate interests in the <americaneagleoutfitters.asia> domain name, as demonstrated by Respondent’s alleged use of the disputed domain name. Complainant contends that Respondent uses the <americaneagleoutfitters.asia> domain name to display links to competing and unrelated websites under headings such as “Womens Summer Fashion” and “Printable Free Coupons.” Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <americaneagleoutfitters.asia> domain name because Respondent’s use of the <americaneagleoutfitters.asia> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(i) legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, Complainant has made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s registration and use of the <americaneagleoutfitters.asia> domain name is disruptive to Complainant’s business. Complainant alleges that the <americaneagleoutfitters.asia> domain name resolves to a website that displays links to competing and non-competing websites. Panels have previously held such a use to be disruptive. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).The Panel finds that Respondent’s use of the disputed domain name, to display various competing and non-competing links to third parties, is disruptive to Complainant’s business and that consequently Respondent registered and is using the <americaneagleoutfitters.asia> domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent registered and is using the <americaneagleoutfitters.asia> domain name in bad faith because that the <americaneagleoutfitters.asia> domain name resolves to a website displaying links to competing and non-competing websites and that Respondent is compensated for this display. Complainant asserts that Respondent intended for the <americaneagleoutfitters.asia> domain name to cause confusion as to the source or sponsorship of the disputed domain name and then took commercial advantage of Internet users’ mistakes resulting from this confusion. Therefore, the Panel finds that Respondent registered and is using the <americaneagleoutfitters.asia> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) as the Panel finds that Respondent intended the <americaneagleoutfitters.asia> domain name to attract, for commercial gain, Internet users to the disputed domain name in order to take advantage of their mistakes. 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).”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the AMERICAN EAGLE OUTFITTERS mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Accordingly, Complainant has made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americaneagleoutfitters.asia> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 1, 2012
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