URS DEFAULT DETERMINATION


AMERICAN GIRL, LLC v. WhoisGuard, Inc.
Claim Number: FA1607001685307


DOMAIN NAME

<americangirl.website>


PARTIES


   Complainant: AMERICAN GIRL, LLC of EL SEGUNDO, CA, United States of America
  
Complainant Representative: Steven M. Levy of Philadelphia, PA, United States of America

   Respondent: WhoisGuard, Inc. WhoisGuard Protected of Panama, Panama, II, PA
  

REGISTRIES and REGISTRARS


   Registries: DotWebsite Inc.
   Registrars: Namecheap

EXAMINER


   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 Examiner in this proceeding.
   Ms. Kateryna Oliinyk, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: July 25, 2016
   Commencement: July 26, 2016
   Default Date: August 10, 2016
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear an convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. Under URS 6.1. if at the expiration of the 14 Calendar Day Response period (or extended period if granted), the Registrant does not submit an answer, the Complaint proceeds to Default. Further URS 6.3. reads that all Default cases proceed to Examination for review on the merits of the claim. The Complainant holds a series of valid trademark registrations for the AMERICAN GIRL mark (the earliest being U.S. reg. no. 2200654 registered on Oct. 27, 1998). The Complainant also holds the domain <AmericanGirl.com> and makes extensive use of the mark such that the mark has gained high degree of recognition. The Complainant contemplates that the Respondent registered the domain name, appropriating famous AMERICAN GIRL trademark, to divert internet users to the conflicting website for the Respondent’s own commercial gain which is one of the indicia of bad faith. The Complainant contemplates that the function of the domain name is strictly commercial, and it does not fit into any accepted definition of “fair use”. Furthermore, the actual use of the website for publication of adverts of AMERICAN GIRL branded products from Amazon.com and its subsidiaries evidences that the Respondent has had the constructive knowledge of the trademark rights, but proceeded to registration of the conflicting domain name that may be regarded as yet another indicia of bad faith.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The registered domain name <americangirl.website> fully incorporates the word mark AMERICAN GIRL for which the Complainant holds valid national and regional registrations and that is in current use. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus .website is of no consequence here. Respectively, the Examiner finds that the domain name <americangirl.website> is identical to the Complainant’s AMERICAN GIRL mark under URS 1.2.6.1. (i).


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Examiner determines that the Respondent is not commonly known by the AMERICAN GIRL name and he has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s AMERICAN GIRL mark in a domain name or otherwise. The records of the case evidence that the name "AMERICAN GIRL" is used for the commercial website which contains links to AMERICAN GIRL branded products from Amazon.com and shows some information about that products. The website participates in the Amazon Associates online affiliate marketing program which provides that the holder of the website earns some referral fees under some conditions as provided for by the program. Thus, the name "AMERICAN GIRL" is not used either as generic or descriptive term, and there is no noncommercial or fair use if advertisements are posted on website. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


The bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. By visiting the site, customers will most likely expect to reach the AMERICAN GIRL website or the website operated by someone who has any ties with or relation to the Complainant which is strongly present onto the international market and is known worldwide. The Respondent who has never been granted the right to use the AMERICAN GIRL mark and who does not have any affiliation ties with the Complainant is using the confusion in the minds of consumers over the use of the well-known AMERICAN GIRL mark to divert users to the own website to increase the traffic to the domain name. . Likelihood of confusion is not diminished by the possibility that the user will discover, upon arriving at Respondent’s website, that the website it reached is not the website it was seeking. Due to the actual use of the website, Respondent must have known of Complainant's famous trademark at the time of the registration of the domain name and must also have known that the registration of the domain names was in bad faith. Thus, the Examiner finds the domain name <americangirl.website> misleading that supports finding of bad faith registration under URS 1.2.6.3.(d).


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. americangirl.website

 

Ms. Kateryna Oliinyk
Examiner
Dated: August 13, 2016

 

 

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