Retail Royalty Company, and AEO Management Co. v. Simon David
Claim Number: FA1209001462426
Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Rebecca B. Gibbs of American Eagle Outfitters, Inc., Pennsylvania, USA. Respondent is Simon David (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneagle-outfitters.com>, registered with Dynadot, LLC.
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 September 12, 2012; the National Arbitration Forum received payment on September 12, 2012.
On September 12, 2012, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <americaneagle-outfitters.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@americaneagle-outfitters.com. Also on September 13, 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 October 10, 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 <americaneagle-outfitters.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS and AMERICAN EAGLE marks.
2. Respondent does not have any rights or legitimate interests in the <americaneagle-outfitters.com> domain name.
3. Respondent registered or used the <americaneagle-outfitters.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its AMERICAN EAGLE OUTFITTERS mark (e.g., Reg. No. 1,893,331 registered May 9, 1995).
ii. Respondent’s disputed domain name merely removes the spaces from the mark and adds a hyphen.
i. Respondent is not commonly known by the disputed domain name, does not own trademark registrations encompassing the disputed domain name, and has not sought or been granted permission to use Complainant’s marks.
i. Respondent’s intent in registering the disputed domain name and its subsequent actions have disrupted Complainant’s business.
ii. Respondent is attempting to attract, for commercial gain, Internet users to its website by creating confusion as to Complainant’s sponsorship or affiliation with the disputed domain name.
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.” 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. 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 will treat them all as a single entity in this proceeding.
Complainant asserts that it designs, markets, and sells casual, current clothing, accessories, basics, and footwear targeting 15 to 25 year olds under the AMERICAN EAGLE OUTFITTERS and AMERICAN EAGLE marks. Complainant contends that it owns trademark registrations with the USPTO for its AMERICAN EAGLE OUTFITTERS mark (e.g., Reg. No. 1,893,331 registered May 9, 1995), as well other trademark issuing authorities around the world. The Panel finds that Complainant’s trademark registrations with the USPTO are sufficient for it to establish rights in the AMERICAN EAGLE OUTFITTERS under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Further, Complainant argues that Respondent’s <americaneagle-outfitters.com> domain name is identical or confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS marks, because the domain name merely removes the spaces from the mark and adds a hyphen. The Panel notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The Panel holds that Respondent’s disputed domain name is confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark, where the domain name removes the spaces from the mark and adds a hyphen and gTLD. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also 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)).
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.”).
Complainant contends that Respondent is not commonly known by the disputed domain name, does not own trademark registrations encompassing the disputed domain name, and has not sought or been granted permission to use Complainant’s marks. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Simon David.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), based upon the available evidence in the record. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Panel notes that Complainant does not present any arguments about Respondent’s use of the disputed domain name as such use relates to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). The Panel looks to page five of the Complaint, within the Policy ¶ 4(a)(i) section, to find Complainant’s contentions relating to Respondent’s resolving website. In that section, Complainant states that Respondent’s website is a “click-through linking portal that, although purporting to relate to Complainants, only provides links to various competitors of American Eagle Outfitters.” See Complainant’s Exhibit I. Complainant contends that such links divert consumers away from Complainant’s official website, and to its competitors, thus causing harm through a loss of sales. The Panel finds that Respondent’s use of the disputed domain name in such a manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent’s intent in registering the disputed domain name and its subsequent actions have disrupted Complainant’s business. As noted under Policy ¶ 4(a)(ii), Complainant has offered evidence which appears to show that Respondent’s resolving website features various third-party links to Complainant’s competitors. Complainant has asserted that it is losing money from Internet users being diverted to its competitors. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, and that such disruption is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant argues that Respondent is attempting to attract, for commercial gain, Internet users to its website by creating confusion as to Complainant’s sponsorship or affiliation with the disputed domain name. Complainant argues that Respondent registered the <americaneagle-outfitters.com> domain name in order to confuse Internet users who seek out Complainant’s business and goods as to Complainant’s affiliation with domain name. The Panel agrees and find that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americaneagle-outfitters.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 22, 2012
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