Retail Royalty Company and AE Direct Co LLC v. On behalf of americaneagleclothin.com OWNER c/o whoisproxy.com Ltd.
Claim Number: FA1512001654754
Complainant is Retail Royalty Company and AE Direct Co LLC (“Complainant”), represented by Kristin Garris of Kilpatrick Townsend & Stockton LLP, New York, United States. Respondent is On behalf of americaneagleclothin.com OWNER c/o whoisproxy.com Ltd. (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneagleclothin.com>, registered with Key-Systems GmbH.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2015; the Forum received payment on December 30, 2015.
On January 4, 2016, Key-Systems GmbH confirmed by e-mail to the Forum that the <americaneagleclothin.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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@americaneagleclothin.com. Also on January 4, 2016, 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.
On January 18, 2016, Respondent sent an E-Mail to the Forum, but did not submit a formal response. The E-Mail in question said: “As the Registrant, we would be willing to transfer the domain to the Complainant in order to settle this dispute.”
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it designs, markets, and sells casual, current clothing, accessories, basics, and footwear targeting 15- to 25-year-olds under the AMERICAN EAGLE mark around the world. Complainant has registered the AMERICAN EAGLE mark with the United States Patent and Trademark Office in 2005. Complainant’s mark and products are well known around the world. The disputed domain name was registered in 2015.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and merely adds the term “clothin,” a misspelling of the generic term “clothing,” eliminates the spacing between the words of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.”
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain resolves to a website that displays hyperlinks that compete directly with Complainant’s business.
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s disputed domain name disrupts and competes with Complainant’s business. Second, Respondent uses the disputed domain name to profit from Internet users’ confusion. Finally, because of the widespread fame of Complainant’s mark, it is clear that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent states: “As the Registrant, we would be willing to transfer the domain to the Complainant in order to settle this dispute.”
The panel will not make any findings of fact, for the reasons explained below.
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 this case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
The same conclusion was reached by the Panel in Boehringer Ingelheim International GmbH v. Modern Limited - Cayman Web Development, FA0211000133625 (Nat. Arb. Forum, January 9, 2003); and in Alstyle Apparel/Active Wear v. John Schwab d/b/a Alstyle de Mexico, FA0307000170616 (Nat. Arb. Forum, September 5, 2003).
For the reasons set forth above, the Panel will not examine this element of the Policy.
For the reasons set forth above, the Panel will not examine this element of the Policy.
For the reasons set forth above, the Panel will not examine this element of the Policy.
Given the common request of the Parties, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americaneagleclothin.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 27, 2016
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