Retail Royalty Company and AE Direct Co LLC v. A K
Claim Number: FA1409001580871
Complainant is Retail Royalty Company and AE Direct Co LLC (“Complainant”), represented by Rebecca B. Gibbs of American Eagle Outfitters, Inc., Pennsylvania, USA. Respondent is A K (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneaglecreditcardr.com>, registered with NAMESILO, LLC.
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.
Hon Sir Ian Barker, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2014; the National Arbitration Forum received payment on September 22, 2014.
On September 22, 2014, NAMESILO, LLC confirmed by e-mail to the National Arbitration Forum that the <americaneaglecreditcardr.com> domain name is registered with NAMESILO, LLC and that Respondent is the current registrant of the name. NAMESILO, LLC has verified that Respondent is bound by the NAMESILO, 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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2014 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@americaneaglecreditcardr.com. Also on September 24, 2014, 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.
A timely Response was received and determined to be complete on October 13, 2014.
An Additional Submission was received from Complainant on October 17, 2014 and deemed compliant.
On October 21, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon Sir Ian Barker 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant designs, markets and sells casual clothing, accessories and footwear, targeting the 15 to 25 year-old market, under the marks AMERICAN EAGLE and AMERICAN EAGLE OUTFITTERS. The Complainant has been operating since 1977 and has more than 1000 stores over many countries. Its worldwide sales over the last 10 years are estimated at over USD25 billion.
The Complainant advertises extensively in print media and on the Internet using the above marks. It provides a credit card for use by consumers in its stores and for buyers on the Internet. It has built up a substantial reputation in the marketplace.
The Complainant has numerous registered trademarks for the words AMERICAN EAGLE, including US Trademark 1,893,331 registered on May 9, 1995. It has registered this mark in some 100 countries worldwide. Several panels under the Policy have recognized the Complainant’s rights in the marks or variations thereof.
The disputed domain name is confusingly similar to the Complainant’s registered trademark. The disputed domain name incorporates all the wording of the trademark plus the words “credit card” followed by the letter “r”. The additions exacerbate the confusion because the term “credit card” is routinely used by the Complainant in connection with its sale of American Eagle goods.
The Respondent has no rights or legitimate interests in the dispute domain name. The Complainant gave him/her/it none. None of the situations in Paragraph 4(c) of the Policy apply to the Respondent.
The Respondent’s website changed after the issue of these proceedings. At the time the Complaint was filed, it showed prominently not only information about the Complainant’s credit card and rewards program, but also featured the credit cards of third parties unrelated to the Complainant.
The website contained inaccurate information about the Complainant’s credit card. The use of the Complainant’s mark in the disputed domain name gives rise to the inference that the site is somehow approved of or affiliated with the Complainant. The third party advertisements have now been removed since these proceedings commenced.
The Respondent registered and is using the disputed domain name in bad faith. The Respondent must have known of the Complainant and its trademarks when the disputed domain name was registered. There is an intent to confuse consumers, despite a disclaimer by the Respondent.
The true identity of the Respondent is unknown. The Respondent is hiding behind a privacy service and is known only by the initials “AB”. This is a further indication of bad faith.
B. Respondent
The website accessed by the disputed domain name is an “independant (sic) review site of the American Eagle Credit Card”. The trailing “R” is an abbreviation for “Review”.
The Respondent is engaged in non-commercial activities and enjoys First Amendment free speech protection, even although the disputed domain name incorporates the Complainant’s registered trademark.
There is no intention to mislead consumers. The Respondent’s website has external links to the Complainant’s official log-in site.
The disclaimer records:
“This site is an independant (sic) review site. Any product names, rewards, and other trademarks featured or referred to within the <americaneaglecreditcaredr.com> site are the property of their respective trademark holders and not affiliated with developing and maintaining the website.”
A sensible member of the public would not confuse the Respondent’s site with that of the Complainant. The Respondent is making legitimate use of the disputed domain name without intent for commercial gain.
The Respondent’s site is not operated in bad faith because the site expressly disclaims affiliation with the Complainant and is non-commercial.
C. Claimant’s Additional Submissions
The Response is inaccurate when it claims that the Respondent’s website is non-commercial since the amended Complaint showed advertisements for services competing with those of the Complainant. The Respondent admitted that the site generated revenue for the Respondent by means of advertisements. This is not a “non-commercial” use but an act of bad faith which is not justified by the links to the Complainant’s website.
The current content of the Respondent’s website is pretextual since it appeared only after the proceedings under the Policy had been commenced.
If the Respondent had had a bona fide intention to provide an independent review of the Complainant’s credit cards, then the Respondent could have selected a domain name which made this clear. Rather, the Respondent’s website is a “bait and switch” scheme to attract visitors to the Respondent’s website.
The Respondent’s disclaimer does not eliminate the confusion for consumers – particularly the “initial intent confusion”.
The Respondent’s continuing reluctance to identify him/her/itself despite the lifting of the privacy screen, adds to the perception of bad faith. There is no way to ascertain whether this Respondent has a displayed pattern of registered domain names which incorporate registered trademarks.
(a) The disputed domain name is confusingly similar to the Complainant’s registered trademarks.
(b) The Respondent has no right or legitimate interests in support of the disputed domain name.
(c) The Respondent registered and is using the disputed domain name in bad faith.
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.
The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s mark in its entirety. The addition of the words “credit card” makes the confusion worse because the Complainant uses the credit card in many retail situations. See AToT Corp v Asia Ventures Inc (WIPO D2005-1012) where it was said:
A domain name which is made up of a registered trademark and another term, especially one that relates to the business in which the registered trademark is used, is confusingly similar for the purposes of Paragraph 4(a)(i) of the Policy.
The addition of “r” seems superfluous and does nothing to alleviate the confusion. It is not a well-known abbreviation for the word “review.”
Accordingly, Paragraph 4(a)(i) of the Policy is satisfied.
The Complainant gave the Respondent no authority to reflect its trademark in a domain name. Accordingly, the burden shifts to the Respondent to show that he/she/it comes within one of the limbs of Paragraph 4(c) of the Policy.
The Respondent appears to rely upon Paragraph 4(c)(iii) and assert that this is a non-commercial use without intent for commercial gain. This condition cannot succeed. The Respondent has admitted receiving “click-through” fees which immediately removes the use from being considered non-commercial without first for commercial gain. There are many cases where this principle has been established. See, e.g., The Paragon Gifts Inc v Govs (WIPO Case D2003-0892) (WIPO 2003).
Nor does the link to the Complainant’s website assist the Respondent. Such unauthorized links reinforce any mistaken belief that the Respondent’s website had some legitimate connection with or endorsement from the Complainant. Rather, the linkage reinforces the bad faith argument.
All this was well-explained in Miller Brewing Company v The Miller Family , NAF FA0201000104177 in these words:
Notwithstanding that Respondent now says it uses and only intends to use the domain name for a non-commercial family website, there is no question that Respondent has attempted to attract Internet users to its site for commercial gain. Use of Complainant’s well-known trademark in the domain name does create the likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site alleviates the confusion, it could very well have the opposite result. In other words, Internet users visiting Respondent’s web site and seeing the link to Complainant’s site, may well conclude there is an affiliation between Respondent and Complainant. I agree with Complainant that the use of the domain name identical to Complainant’s well-known mark to advertise Respondent’s own businesses suggests opportunistic bad faith pursuant to Policy 4(b)(iv). Therefore, on this point, Complainant has established bad faith.
The Panel agrees with the Complainant’s additional submission that the change in the Respondent’s website after the proceedings had begun is pretextual. The situation at the time of the filing of the Complaint is relevant when assessing the Respondent’s conduct. Indeed, the changes made are a kind of admission by the Respondent that the original website was illegitimate in part.
The presence of a disclaimer does not assist the Respondent. It does little to counter the initial expectation of the Internet user that there is some connection with the Complainant. See DaimlerChrysler Corp. v Bargman (WIPO D2000-0222).
In General Electric Company, GE Osmonics Inc V Optima di Federico Papi, WIPO D2007-0465 it was said:
… (while ‘disclaimers may well be effective in disabusing internet users of an confusion once they arrive at Respondent’s site, they clearly do not offset the obvious risk of so-called ‘initial interest confusion’. It is highly likely that many of those encountering the domain name through a search engine will believe that the site is operated either by Complainant or by a licensee or authorized distributor.
Accordingly, Paragraph 4(a)(ii) of the Policy is satisfied.
The worldwide fame of the Complainant and its marks and the specific targeting by the Respondent of its credit card make it easy to infer that registration occurred in bad faith in the full knowledge of the Complainant’s trademark rights. Indeed, the disclaimer indicates that the Respondent well knows what those rights are.
Bad faith use is easily inferred from the confusion described earlier whereby Internet users would consider that the Respondent’s website had some legitimate connection with the Complainant. The use of a disclaimer does not mitigate a finding of bad faith. The Respondent’s website must be disruptive to the Complainant’s business.
The Panel considers that the concealment of identity by the Respondent does nothing to dispel the notion of bad faith. It is unusual in this Panelist’s experience expanding over many years for a registrant of a domain name who has taken advantage of the anonymity granted by a privacy shield, to remain anonymous after the shield has been lifted. One has to ask why the Respondent would want to continue to hide his/her/its identity if the Respondent’s intention was to provide an objective review of the pluses and minuses of the Complainant’s credit card offering. Any dispassionate reviewer, one would have thought, had little to fear.
The Panel notes with concern that a Registrar should accept a registration from someone who does not supply details of identity. It is important that the identity of an individual or corporation be known. A party aggrieved by the illegitimate use of a domain name, may need to take proceedings other than those under the Policy.
As to the claim about the First Amendment, the Policy alone provides the legal bases for deciding complaints untrammeled by national laws. Registrants sign up to having domain name disputes determined under the Policy and not under any national law when they register the domain names.
Accordingly, Paragraph 4(a)(iii) of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americaneaglecreditcardr.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon Sir Ian Barker, Panelist
Dated: October 31, 2014
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