national arbitration forum

 

DECISION

 

Retail Royalty Company, and AEO Management Co. v. Michael Killi

Claim Number: FA1302001486068

PARTIES

Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Rebecca B. Gibbs of American Eagle Outfitters, Inc., Pennsylvania, USA.  Respondent is Michael Killi (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americaneaglecoupons2013.com>, registered with Godaddy.com, LLC.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2013; the National Arbitration Forum received payment on February 20, 2013.

 

On February 21, 2013, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <americaneaglecoupons2013.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the names.  Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, 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 February 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2013 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@americaneaglecoupons2013.com.  Also on February 22, 2013, 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 April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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

Complainant’s Contentions

Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity

Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests

Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in its AMERICAN EAGLE and AMERICAN EAGLE OUTFITTERS marks.

2.    Respondent’s <Americaneaglecoupons2013.com> domain name is confusingly similar to complainant’s marks.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims that it owns numerous trademark registrations for the AMERICAN EAGLE OUTFITTERS marks which it uses to sell clothing, accessories, and provide retail and online services.  See USPTO Reg. No. 1,893,331 registered on May 9, 1995.  Complainant notes that its business also operates under the USPTO registered AMERICAN EAGLE marks.  See Reg. No. 3,545,443 registered on Dec. 9, 2008; Reg. No. Reg. No. 3,797,646 registered on June 1, 2010.  The Panel agrees that USPTO registration for these marks is sufficient evidence of Complainant’s rights under Policy ¶ 4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant next contends that Respondent’s <americaneaglecoupons2013.com> domain name is confusingly similar to the AMERICAN EAGLE marks.  Complainant notes that the domain name merely includes the generic term “coupons” to a derivative of Complainant’s mark.  The Panel notes that the domain name also features the gTLD “.com,” the deletion of the spacing in the AMERICAN EAGLE mark, and the numerals constituting the present year, 2013.  The Panel agrees that neither spacing nor the addition of a gTLD is relevant to this analysis.  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  The Panel also agrees that the term “coupons” is too generic to differentiate this domain name from the AMERICAN EAGLE mark.  See Qwest Comm. Intl., Inc. v. Chase, FA 223006 (Nat. Arb. Forum Feb. 13, 2004) (“Discount” is a generic addition, with no distinctiveness.  The term “discount” refers to the trademark. . . in a way indicating a low-price or discount offer for products/services of the said trademark.).  The Panel further agrees that adding the present year into the domain name does not pierce through the domain name’s confusing similarity.  See Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that the respondent’s domain names <pokemon2000.com> and <pokemons.com> are confusingly similar to the complainant’s mark).  Therefore the Panel agrees that the <americaneaglecoupons2013.com> domain name is confusingly similar to the AMERICAN EAGLE marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 does not possess any intellectual property rights or other rights in the <americaneaglecoupons2013.com> domain name so as to suggest Respondent is commonly known by that domain name.  Complainant notes that the WHOIS information provides little insight as to why Respondent should be found to be commonly known by the disputed domain name. Complainant also asserts that Respondent is not affiliated with, licensed by, or in privity with Complainant and has not been given permission to use Complainant’s marks. The Panel notes that the WHOIS information in fact lists “Michael Killi” as the domain name’s registrant.  The Panel agrees that based on this record, it is sound to conclude that Respondent is not commonly known by the <americaneaglecoupons2013.com> domain name under Policy ¶ 4(c)(ii).  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). 

 

Complainant notes in its Complaint that the domain name resolves to a website that offers fake and misleading information and coupons to the public.  The Panel  notes that the disputed domain name resolves to a website featuring the AMERICAN EAGLE mark and offering purported coupons for Complainant’s products that promise the user that they will be able to buy products from Complainant’s website at a steeply discounted price.  See Complainant’s Ex. J.  The Panel further notes that the domain name features “AdChoices” that redirect the Internet user to other businesses, include Hollister Co. and Aeropostale Online—two of Complainant’s competitors.  See id.  The Panel agrees that neither the display of hyperlinks nor the use of Complainant’s marks to lure Internet users to Respondent’s own website constitutes a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and used the <americaneaglecoupons2013.com> domain name primarily to disrupt Complainant’s business.  Complainant contends that Respondent is using the domain name to provide the public with false information regarding Complainant’s products while also redirecting the user to Complainant’s competitors.  The Panel notes that hyperlink advertisements to Complainant’s competitors are explicitly featured on the domain name’s resolving website.  See Complainant’s Ex. J.  The Panel agrees that it is Policy ¶ 4(b)(iii) bad faith use and registration for Respondent to use the domain name to purport to offer discounts on Complainant’s apparel whilst overtly suggesting Internet users click through hyperlinks to Complainant’s competitors.  See  Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Complainant also argues that Respondent is hosting a blog-style website that discusses coupons offered by Complainant, but does so by providing false information and promoting hyperlinks to Complainant’s competitors.  Complainant argues that Respondent’s use of Complainant’s trade and design marks on the domain name make it likely that Internet users will be deceived into believing that the domain names are run by Complainant.  The Panel notes that the <americaneaglecoupons2013.com> domain name’s resolving website features the AMERICAN EAGLE mark excessively in a webpage that requests the Internet user to click on hyperlinks to Complainant’s competitors.  See Complainant’s Ex. J.  The Panel agrees that Respondent’s bad faith use and registration may be shown under Policy ¶ 4(b)(iv), which has been construed to forbid Respondent from profiting by confusing Internet users into believing the competing hyperlinks they click on are in some way affiliated with, or sponsored by, Complainant.  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Complainant finally argues that Respondent knew or should have known of Complainant’s rights in the AMERICAN EAGLE marks.  Complainant contends that Respondent’s use of Complainant’s own marks and designs on its domain name illustrates actual knowledge.  Complainant believes that its trademark registrations serve as constructive knowledge.  While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

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 <americaneaglecoupons2013.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 11, 2013

 

 

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