national arbitration forum

 

DECISION

 

Retail Royalty Company and AEO Management Co. v. Above.com Domain Privacy

Claim Number: FA1206001447693

 

PARTIES

Complainant is Retail Royalty Company and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americaneagleoutfillers.com>, registered with Above.com, Pty. Ltd.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2012; the National Arbitration Forum received payment on June 7, 2012.

 

On June 7, 2012, Above.com, Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <americaneagleoutfillers.com> domain name is registered with Above.com, Pty. Ltd. and that Respondent is the current registrant of the name.  Above.com, Pty. Ltd. has verified that Respondent is bound by the Above.com, Pty. 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 June 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@americaneagleoutfillers.com.  Also on June 8, 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 July 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainants own several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the AMERICAN EAGLE OUTFITTERS mark (e.g., Reg. No. 1,893,331 registered May 9, 1995).
    2. Complainants also own a trademark registration with IP Australia (“IPA”) for the AMERICAN EAGLE mark (Reg. No. 1,126,472 registered January 15, 2009).
    3. Respondent’s <americaneagleoutfillers.com> domain name is confusingly similar to the AMERICAN EAGLE OUTFITTERS mark, merely replacing the letters “TT” of the mark with “ll” in the domain name.
    4. Respondent has no rights or legitimate interests in the disputed domain name.
    5. Respondent’s domain name resolves to a website displaying third-party links to Complainants’ competitors in the clothing and fashion industry. 
    6. Respondent’s disputed domain name has created a disruption in Complainants’ business, which is evidence of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds registered trademarks for the AMERICAN EAGLE OUTFITTERS and the AMERICAN EAGLE marks.  Respondent did not submit a Response in this proceeding

 

DISCUSSION

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.”).

 

Preliminary Issue: Multiple Complainants

 

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.”  

 

There are two Complainants in this matter: Retail Royalty Company and AEO Management Co.  Complainants assert that both entities identified above are related companies.  Complainants assert that both are wholly-owned subsidiaries of American Eagle Outfitters, Inc.  Complainants go on to state that Complainant, AEO Management Co., is responsible for the operation of retail stores and that Complainant, Retail Royalty Company, holds title to the intellectual property of American Eagle Outfitters, Inc.  As such, Complainant asserts that both entities are able to bring this claim. 

 

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 Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. 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.”).

 

On this record, the Panel finds that the evidence is sufficient to establish a sufficient nexus or link between the Complainants and therefore both are treated as a single entity in this proceeding.  Therefore, in this Decision the Complainants will be collectively referred to as “Complainant.”

 

Identical and/or Confusingly Similar

 

Complainant claims that it has rights in the AMERICAN EAGLE and AMERICAN EAGLE OUTFITTERS marks under Policy ¶ 4(a)(i).  Complainant offers numerous trademark registration certificates that it owns with national trademark authorities worldwide as evidence of its rights in the marks.  The marks that are directly applicable to the instant proceedings are Complainant’s AMERICAN EAGLE OUTFITTERS mark that it owns with the USPTO (e.g., Reg. No. 1,893,331 registered May 9, 1995) and the AMERICAN EAGLE mark that it owns with the IPA (Reg. No. 1,126,472 registered January 15, 2009).  Based upon Complainant’s evidence, the Panel finds that Complainant has rights in both the AMERICAN EAGLE OUTFITTERS and AMERICAN EAGLE marks under Policy ¶ 4(a)(i) through its various trademark registrations.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).  Further, the Complainant need not own a trademark registration for the AMERICAN EAGLE OUTFITTERS mark in the country of Respondent for purposes of Policy ¶ 4(a)(i).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Further, Complainant argues that Respondent’s <americaneagleoutfillers.com> domain name is confusingly similar to the AMERICAN EAGLE OUTFITTERS mark, merely replacing the letters “tt” of the mark with “ll” in the domain name.  The disputed domain name also removes the spaces between the terms and adds the generic top-level domain (“gTLD”) “.com.”  The changes made to Complainant’s mark within the domain name do not remove the disputed domain name from the realm of confusing similarity.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant contends that Respondent is not commonly known by the disputed domain name according to the WHOIS information on file.  The WHOIS information identifies “Above.com Domain Privacy” as the registrant of the disputed domain name, which is not similar to the <americaneagleoutfillers.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), where the WHOIS information and other information on record does not indicate a relationship between the registrant and the domain name at issue.  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Further, Complainant asserts that the disputed domain name resolves to website that features various third-party links to Complainant’s competitors in the clothing and fashion industry.  The links displayed on the resolving website advertise Complainant’s official website, as well as its competitors such as Aeropostale, L.L. Bean, JCPenney, and Lands’ End.  Therefore, the Panel finds 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 <americaneagleoutfillers.com> domain name under Policy ¶ 4(c)(iii), because Respondent is using the domain name to promote Complainant’s competitors, while also featuring a link to Complainant’s official website.  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also 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).”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s disputed domain name is being used to disrupt Complainant’s business.  Complainant asserts that Respondent is diverting Internet traffic from Complainant to Complainant’s competitors by resolving the confusingly similar disputed domain name to a links directory website.  Complainant argues that such diversion is injurious to Complainant’s business operation as Complainant loses business when Internet consumers are diverted to other sources of clothing goods.  Respondent’s use of the disputed domain name to display third-party links to Complainant and its competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

Complainant also contends that Respondent’s registration and use of the disputed domain name not only diverts Internet users away from Complainant’s business, but that Respondent also causes confusion as to Complainant’s affiliation with the website.  Complainant argues that Respondent is profiting from its use of the disputed domain name and is “pirating” Complainant’s ability to use a confusingly similar version of its mark on the Internet.  Because the Panel finds that Respondent registered and is using the disputed domain name in order to intentionally attract Internet users to its website for commercial profit by creating confusion with Complainant’s mark, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <americaneagleoutfillers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  July 16, 2012

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page