Retail Royalty Company, and AE Direct Co LLC v. Daniel Golding
Claim Number: FA1505001620890
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 Daniel Golding (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thestageae.com>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2015; the Forum received payment on May 22, 2015.
On May 22, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thestageae.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@thestageae.com. Also on May 26, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2015, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant contends as follows:
Complainant has rights in the STAGE AE mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,939,180, registered March 29, 2011).
Respondent’s <thestageae.com> domain name is identical or confusingly similar to Complainant’s STAGE AE mark. The disputed domain name only adds the definite article “the” and the generic top-level domain (“gTLD”) “.com.”
Based on WHOIS information Respondent is not commonly known by the disputed domain name. WHOIS information indicates that Respondent identifies as “Daniel Golding.” Respondent uses the disputed domain name to host pay-per-click advertisements and to promote Respondent’s other businesses. Respondent use of the disputed domain name is not merely to host a “fan site” but to commercially profit from association with Complainant’s STAGE AE mark. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s use of the disputed domain name creates a likelihood of confusion in the minds of internet users seeking information about Complainant’s venue which Respondent exploits for commercial gain.
Respondent, at the time of Registration, had actual knowledge of Complainant’s STAGE AE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the STAGE AE mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark(s).
Respondent uses the disputed domain name to host pay-per-click advertisements and to promote Respondent’s other businesses.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the KIPLING trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <thestageae.com> domain name features Complainant’s STAGE AE mark in its entirety less its space, prefixed with the definite article “the” and has the “.com” top-level domain name appended to the resulting string. The ensuing differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <thestageae.com> domain name is confusingly similar to Complainant’s STAGE AE trademark. See Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"); 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)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Daniel Golding” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <thestageae.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name to host pay-per-click advertisements and promote Respondent’s businesses. The website addressed by the <thestageae.com> domain name displays pay-per-click advertisements that market such things as “Mental Health Counseling,” and hotel booking services, as well as numerous other third party businesses and services. The website also pretends to be a legitimate fan site for Complainant’s STAGE AE venue. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also, Verizon Trademark Services LLC v Donald Sk/enka, Claim No. FA1411 001588405 (NAF Dec. 5, 2014) ("Fan sites have been accepted in appropriate circumstances as giving rise to a legitimate interest in a domain name. The test, however, is whether the fan site defence is, on the evidence, "plausible"); see also, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com," WIPO D2000-0847 ("[U]se which intentionally trades on the fame of another cannot constitute a 'bona fide' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.")
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent uses the domain name to address a website displaying pay-per-click links to third party businesses and to operate its own business. Respondent clearly intends that the brand recognition and goodwill associated with Complainant’s STAGE AE mark will increase traffic to Respondent’s <thestageae.com> website and ultimately to the pay-per-click links Respondent displays thereon and/or to the commercial services of Respondent. The website addressed by the confusingly similar domain name gives the false impression that Complainant’s may be affiliated with or sponsored the <thestageae.com> website. The foregoing demonstrates Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also, David Foox v. Kung Fox and Bill Hicks, WIPO No. D2008-0472 ("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 trade mark 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.")
Additionally, Respondent registered the <thestageae.com> domain name knowing that Complainant had trademark rights in the STAGE AE mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s incorporation of such trademark into the at-issue domain name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <thestageae.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thestageae.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 22, 2015
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