Retail Royalty Company and AE Direct Co LLC v. Noriyuki Sumiyama
Claim Number: FA1502001604764
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 Noriyuki Sumiyama (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeo.link>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
David L. Kreider, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2015; the Forum received payment on February 12, 2015.
On February 16, 2015, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <aeo.link> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2015 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@aeo.link. Also on February 20, 2015, 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 March 2, 2015. The Registrant’s Response is elegant in its brevity, reciting only:
‘I only wanted three letters domain name. And, This domain is not particularly necessry. I will give this domain for you in delight’.
On March 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 the Complainant.
A. Complainant
Introduction
Complainant designs, markets and sells casual, current clothing, accessories, basics, and footwear targeting 15 to 25 year-olds under the marks American Eagle Outfitters, AE and AEO (the "AEO Marks") at its own American Eagle Outfitters retail stores and on its website <ae.com>.
Complainant offers well-designed, high-quality merchandise at affordable prices, and is one of the top ranking youth lifestyle brands. American Eagle Outfitters opened its first American Eagle Outfitters retail store in the United States in 1977, and now operates over 1000 retail stores in many countries. Over the past thirty years, American Eagle Outfitters has achieved strong consumer recognition and good will, and it currently ships products to more than 80 countries worldwide.
Since 1977, Complainant has sold billions of dollars’ worth of products under the AEO Marks. Sales for various goods bearing the AEO Marks worldwide over the past ten years are estimated at more than USD $25 Billion, including approximately USD $3.3 Billion in 2013. Complainant has also spent hundreds of millions of dollars in advertising and promoting goods and services under the AEO Marks.
Complainant advertises the AEO Marks on the Internet and makes extensive use of sweepstakes, e-mail blasts, and proprietary content such as music, videos, and slide-shows to draw its target consumers to its <ae.com> website. In addition, Complainant's merchandise itself often proclaims the American Eagle Outfitters brand message. One of the hallmarks of Complainant's design team is its use of the AEO Marks as design elements on signature merchandise, such as jewelry, shirts, labels and tote bags.
As a result of such extensive use and promotion, the AEO Marks have acquired a high degree of public recognition, fame, and distinctiveness as a symbol of the source of high quality goods offered by Complainant, and embody valuable reputation and good will belonging exclusively to Complainant.
(a.) The Disputed Domain Name Is Identical or Confusingly
Similar to Complainant's AEO Marks
Complainant's AEO Marks are widely and well-known and indicative of the source of its retail stores, Internet website, products and services. Indeed, Complainant's ownership of the numerous registrations for its AEO Marks, as set out above, establishes that Complainant has a presumption of rights in the AEO Marks. See Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The burden then shifts to the Respondent to refute that presumption).
The domain name <aeo.link> is identical to and fully incorporates Complainant's federally registered AEO Marks in their entirety.
In view of the widespread and renown, use, promotion, distribution and advertisement by Complainant of the AEO Marks and brand, Respondent knew or should have known of Complainant's rights in the AEO Marks, and the valuable goodwill represented and symbolized by Complainant's AEO Marks when it registered the domain name <aeo.link>.
(b.) Respondent Has No Rights Or Legitimate Interest In
The Disputed Domain Name
Respondent's adoption, registration, and use of the challenged domain name are without the license or permission of Complainant. Moreover, since Complainant's adoption and extensive use of the AEO mark significantly predate the first use of the Disputed Domain Name, the burden is on Respondent to establish that it has rights or legitimate interests in the Disputed Domain Name. See, PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, D2003-0174 (WIPO April 22, 2003). Here, Respondent cannot demonstrate or establish any such rights or legitimate interests. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's AEO mark. The Domain Name is not, nor could it be contended to be, a legitimate name or nickname of Respondent, nor is it in any other way identified with or related to any rights or legitimate interest of Respondent. See AB SCIEX, LLC v. VistaPrint Tech. Ltd., FA1559200 (NAF June 20, 2014) ("because respondent was not authorized by complainant to use the AB SCIEX mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that respondent is not commonly known by the <absciexllc.com> domain name under Policy ¶ 4(c)(ii)").
Furthermore, Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name, and there is no evidence of any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Upon information and belief, Respondent has registered and is using the Disputed Domain Name solely for commercial gain. When an Internet user types into a browser the address of the Domain Name, the user is connected to a click-through portal. Sponsored links at that portal reference Complainant's AEO, AMERICAN EAGLE, and AERIE marks, but also provide links to sites offering and promoting products of AEO's direct competitors, as well as products unrelated to Complainant. See GMB, Inc. v. Caribbean Online Int’l Ltd., D2007-1159 (WIPO Oct. 2, 2007) ("The use of the disputed domain name to resolve to a Web site that contains links and/or referenced to the complainant's competitors and class of products cannot be legitimate, especially in light of the widespread publicity that has been given to the trademark .. . ."); Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (using the domain name "to display a list of hyperlinks, some of which advertise complainant and its competitors' products" does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Upon information and belief, each click on the third-party links or advertisements on Respondent's <aeo.link> website results in revenue for Respondent as the domain name holder. Although Respondent's website does include links named "AEO," "American Eagle," and "Aerie," the web pages to which those links resolve in turn include sponsored links to websites offering products sold by Complainant's competitors. See Deutsche Telekom AG v. Andrew Miller, D2008-0296 (WIPO April 17, 2008) ("The resolution of the Domain Names to a website which features sponsored links to third parties' websites (some of which offer products of the complainant's competitors), suggests that the respondent has been using the Domain Names for commercial purposes."); Shahnaz Husain v. Saxena Dinesh 0., D2006-1132 (WIPO Oct. 26, 2006) ("Respondent's use of the Domain Name to divert Internet users to his website and redirect them to other websites, some of which offer for sale the complainant's direct competitor's products, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name . . . .").
That sponsored links appearing on Respondent's website may have been placed or generated by the registrar or other service provider instead of Respondent is of no importance. Respondent, as the one who chose the Disputed Domain Name and registrar or other service providers, is fully responsible for the use to which the Disputed Domain Name is put and, in particular, for what appears on the web pages placed at the Domain Name. See Grundfos A/S v. Texas Int’l Property Assoc., D2007-1448 (WIPO Dec. 14, 2007) ("Respondent is ultimately responsible for the content of the website generated by domain sponsor's technology"); Express Scripts, Inc. v. Windgather Investments Ltd./Mr Cartwright, D2007-0267 (WIPO April 26, 2007) (respondent was responsible for the advertisements because it "placed the Domain Name with a parking company in circumstances where it would have been aware that the 'parking company' website would generate advertisements of some sort and given the similarity of the Domain Name to the Complainant's name, it should have been of no surprise to the respondent that links to [websites concerning products/services related to those of complainant] would be generated").
In view of the extensive use and recognition of Complainant's AEO Marks, and the fact that Respondent has no rights in them, Complainant reasonably believes that Respondent has registered and is using the Disputed Domain Name not for any legitimate noncommercial or fair use purpose, but rather to profit from the web traffic generated through the Domain Name. Such use of the Domain Name does not constitute a legitimate, bona fide offering of goods or services. See Starwood Hotels & Resorts Worldwide, Inc. et al. v. Marketing Total S.A., D2008-0019 (WIPO March 6, 2008) ("The respondent's use of the disputed domain names serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use does not represent a use in connection with a bona fide offering of goods and services.").
(c.) Respondent Registered and Used the Disputed Domain Name in Bad Faith
Generally, the Panel looks at "the totality of circumstances" to determine if Respondent's bad faith in registering a domain is apparent. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances"). The following circumstances compel the transfer of the <aeo.link> domain name.
Upon information and belief, Respondent is acting in bad faith by leveraging the notoriety of the AEO mark to monetize the web traffic that flows through the Domain Name and derive a financial benefit therefrom. Such use of the Disputed Domain Name for profit is an act of bad faith. See Volvo Trademark Holding AB v. Dinoia, D2004-0911 (WIPO Jan. 19, 2005) (use of domain name to provide sponsored results was interpreted by panel "to mean that respondent receives compensation for the listings and links that it includes in its search results and/or for hits on the sites respondent references," and this use falls "squarely within the terms of paragraph 4(b)(iv)" of the Policy); Starwood Hotels & Resorts Worldwide, Inc. et al., D2008-0019 ("evidence indicates that the respondent is obtaining 'click through' revenue from the disputed domain names and that many of the links found on the websites to which the disputed domain names resolve lead to competitors of the complainant …. [and such] intentional use of confusingly similar domain names to attract internet users to websites with links to competitors of a trademark owner established bad faith."); Hilton Group plc v. Forum LLC, D2005-0244 (WIPO April 22, 2005) (use of domain name to attract users for commercial gain is evidence of bad faith).
Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the Disputed Domain Name by creating a likelihood of confusion with Complainant's AEO mark as to the source or endorsement of, or affiliation with, the website. Indeed, the Disputed Domain Name contains Complainant's exact AEO mark, and the <aeo.link> page includes links that use Complainant's brand names. Respondent's bad faith is established by the likelihood that Internet users will mistakenly believe the Disputed Domain Name is connected to or associated with Complainant. See Volvo Trademark Holding AB v. SC-RAD Inc., D2003-0601 (WIPO Oct. 9, 2003); Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti, D2001-1158 (WIPO Dec. 18, 2001).
That Respondent has posted the following disclaimer at the bottom of the <aeo.link> page is of no import: "The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers." Such a disclaimer in small print at the bottom of a web page fails to lessen the initial confusion that is likely to be experienced by Internet users seeking a website operated or authorized by Complainant. The disclaimer is visible only after the misleading Disputed Domain Name has already attracted the user to Respondent's website. See Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, D2004-0312 (WIPO July 2, 2004) (consumers would realize the website is not associated with complainant only after they accessed the site and could see the disclaimer; "[a]t this point, however, they had already been diverted and misled"); General Electric Co., GE Osmonics Inc. v. Optima di Federico Papi, D2007-0645 (WIPO July 30, 2007) (disclaimers "do not offset the obvious risk of so-called 'initial interest confusion"'); David Foox v. Kung Fox and Bill Hicks, D2008-0472 (WIPO May 30, 2008) ("What is the consequence of a third party adopting for itself the name/trade mark (without any addition or adornment) of a trade mark owner and using it to connect to a website? The inevitable consequence is that there will be initial interest confusion. A substantial proportion of lnternet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trademark owner. When they reach the site they may realize that they have been duped, but in any event the registrant's objective of bringing them there will already have been achieved."). Second, the disclaimer appears only if viewers scroll down the entire web page, which displays links to websites offering products sold by competitors of Complainant. Placement of a disclaimer in such a location is ineffective. See Pliva, Inc. v. Eric Kaiser, D2003-0316 (WIPO June 9, 2003) (disclaimer is not effective: "on the home page itself, the disclaimer is still below the place where a customer would click to order respondent's product," and "[it] comes after a full page of marketing where the 'Antabuse' name appears many times").
Whatever Respondent's intent in registering the domain name, Respondent's actions have disrupted Complainant's business. Respondent's actions are injurious to Complainant because Respondent may attempt to attract, for Respondent's own commercial gain, Internet users to Respondent's challenged website, or to some other on-line location owned or controlled by Respondent, by creating a likelihood of confusion with Complainant's AEO Marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
B. Respondent
By its Response, timely submitted and quoted in full above, Respondent alleges only that it ‘only wanted a three-letter [recte] domain name’. Respondent further offers to gift the Disputed Domain Name to Complainant.
Complainant uses the AEO mark in connection with its business as a clothing retail store. Complainant’s rights in and to the AEO mark are evidenced by numerous trademark registrations around the world, including with the USPTO (e.g., Reg. No.1,877,686, registered February 7, 1995). The Disputed Domain Name fully incorporates Complainant’s mark and is intentionally misleading to public Internet users.
Respondent uses the website to which the Disputed Domain Name resolves for its own commercial gain by placing a variety of different links to competing companies, while presumably receiving click-through fees when confused Internet users select one of the hyperlinks posted there. Complainant has submitted a screenshot of Respondent’s website as evidence in support of this argument.
Respondent asserts that it ‘only wanted a three-letter domain name’. It is open to this Panel to conclude from Respondent’s assertion that mere coincidences lead the Respondent to register and use the three letters “AEO”, which happen to comprise Complainant’s registered Mark. The UDRP imposes no duty on Respondent to inquire to determine whether Complainant or another third party enjoyed rights in the mark before registering the Disputed Domain Name. See It’s Just Lunch Int’l LLC v. Dialog Software, FA 77284 (Nat. Arb. Forum June 10, 2008) (noting that “… the operative domain name registration agreement neither expressly nor impliedly requires a registrant to perform a trademark search prior to registration. It would have been an easy matter to include such a requirement in the text of the registration agreement if such was the intent of the agreement’s drafter. Likewise, the UDRP includes no such mandate”.).
To the contrary, Complainant’s evidence, which included screen shots, that the Disputed Domain Name resolves to a ‘click-through’ website offering for sale not only the Complainant’s branded goods and merchandise, but also the wares of Complainant’s competitors, confirms beyond all doubt that Respondent’s selection, registration and bad faith use of the three letters “AEO” was not by accident or coincidence, but by the intentional acts of Respondent, who sought to mislead Internet users for commercial gain and to ‘free-ride’ on the good will and brand recognition of Complainant’s registered Marks.
Only after Complainant instituted these administrative proceedings has the Respondent expressed in its Response a wish to gift the Disputed Domain Name to Complainant. This Panelist is unimpressed by Respondent’s sudden munificence, which appears to this Panel to be motivated by Respondent’s desire to avoid a factual finding that Respondent registered and used 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 Panel finds that the disputed <aeo.link> domain name is confusingly similar to Complainant’s AEO mark, because the Disputed Domain Name fully incorporates Complainant’s mark. The affixation of a TLD is irrelevant to the Policy ¶ 4(a)(i) analysis.
Complainant contends, and this Panel so finds, that Respondent lacks rights and legitimate interests in the <aeo.link> domain name. Respondent has never been licensed or authorized to use the AEO mark, nor is Respondent commonly known by the Disputed Domain Name. The WHOIS information identifies “Noriyuki Sumiyama” as the registrant of the disputed domain name. Respondent has not sought to rebut Complainant’s contended rights and interest in the Disputed Domain Name, nor has Respondent sought to allege any right or legitimate interest in the Disputed Domain Name on its part.
Complainant has alleged, and this Panel so finds, that Respondent registered and uses the Disputed Domain Name and the website to which resolves in bad faith for its own commercial gain.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeo.link> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Esq., Panelist
Dated: 21 March 2015
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