Retail Royalty Company and AE Direct Co LLC v. TexPrompt, Inc TexPrompt, Inc
Claim Number: FA1602001659909
Complainant is Retail Royalty Company and AE Direct Co LLC (“Complainant”), represented by Kristin Garris of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is TexPrompt, Inc TexPrompt, Inc (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aerie.design>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2016; the Forum received payment on February 7, 2016.
On February 8, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <aerie.design> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 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@aerie.design. Also on February 8, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 designs and markets casual clothing, accessories and intimate apparel under the AERIE mark at its AERIE retail stores, as well as at select American Eagle Outfitters retail stores and via its website at <ae.com/aerie>.
Complainant holds a registration for the AERIE mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,486,591, registered Aug. 12, 2008).
Respondent registered the domain name <aerie.design> on September 8, 2015.
The domain name is confusingly similar to Complainant’s AERIE mark.
Respondent has not been commonly known by the domain name.
Respondent has not been licensed or otherwise authorized to use Complainant’s AERIE mark.
Respondent uses the domain name to resolve to a parked website that hosts links to the websites of both Complainant and its business competitors.
Respondent uses the domain name to confuse and attract internet users for its commercial profit.
This use is neither a bona fide offering of goods or services by means of, nor a legitimate noncommercial or fair use of, the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent must have known about Complainant and its AERIE mark at the time of its registration of the domain name.
Respondent has registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding which is in compliance with the requirements of the policy and its attendant Rules. However, in an e-mail message addressed to the Forum, Respondent has recited as follows:
I have no desire to oppose this complaint…. If [Complainant want[s] Aerie.design they can certainly have it.
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following in order to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly
similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights to or legitimate interests in respect of the
domain name; and
iii. the same domain name was registered and is being used by Respondent in bad faith.
Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."
Further, Policy Paragraph 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004. To the same effect, see also Disney Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005)).
DECISION
Respondent does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant's request that the challenged domain name be transferred to Complainant. Rather Respondent has declared in writing its willingness that the domain name be so transferred. Thus the parties have effectively agreed in writing to a transfer of the domain name from Respondent to Complainant without the need for further proceedings, including otherwise required findings.
Accordingly, it is Ordered that the <aerie.design> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 4, 2016
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