Retail Royalty Company and AE Direct Co LLC v. Daniel Cormier
Claim Number: FA1610001698852
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 Daniel Cormier (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeried.com>, registered with Tucows Domains Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically October 19, 2016; the Forum received payment October 19, 2016.
On October 19, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <aeried.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. verified that Respondent is bound by the Tucows Domains Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@aeried.com. Also on October 20, 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.
A timely Response was received and determined to be complete November 9, 2016.
Correspondence and other filings purporting to be additional submissions are contained in the record but are not referenced unless they complied with Supplemental Rule 7. The Panel reviewed those submissions, which also include Respondent’s Additional Submission, received timely on November 21, 2016, pursuant to Forum Rule #7. Respondent’s Additional Submission contains Exhibits “A” through “I” each of which contains the word aeried and various uses and definitions for it. Nothing in these additional submissions would change the outcome here for the reasons set out below.
On November 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 Complainant.
A. Complainant’s Allegations in this Proceeding:
Complainant operates in the clothing and apparel industry under several marks, including the AERIE mark. Complainant has rights in the AERIE mark with registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,486,591, registered Aug. 12, 2008). Respondent’s <aeried.com> is confusingly similar to the AERIE mark because it merely adds a “d” to the end of the fully incorporated and unaltered mark, along with the “.com” generic top-level domain (“gTLD”). The alteration also presents phonetic similarity.
Respondent lacks rights or legitimate interests in <aeried.com>. No relationship exists between Complainant and Respondent that would confer rights in the mark or domain name, and Respondent has not established that it is commonly known by <aeried.com>. Further, Respondent’s site does not point to any active site, as shown in Exhibits L and M. This does not indicate any bona fide offering of goods or services or any legitimate noncommercial or fair use by Respondent.
Respondent registered and passively held <aeried.com> in bad faith. Respondent typosquatted by simply adding a “d” to the AERIE mark in an effort to capture Internet traffic, creating initial confusion, which amounts to bad faith. Respondent has also engaged an identity protection service to conceal its address and contact information. Further, Respondent’s inactive holding of the domain name since registering it also supports a Policy ¶ 4(a)(iii) finding of bad faith registration and use.
B. Respondent’s Contentions in this Proceeding:
Respondent registered <aeried.com> May 21, 2011.
AERIED is a dictionary term that is distinct from the AERIE mark in which Complainant has asserted rights.
Respondent did not address the three areas for discussion in this case.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines: “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Two Complainants filed this matter: Retail Royalty Company and AE Direct Co LLC. They claim to be wholly owned subsidiaries of American Eagle Outfitters, Inc. See Compl., at Attached Ex. G (SEC webpage). Complainants also assert that Retail Royalty Company owns the trademark registrations for the AMERICAN EAGLE OUTFITTERS marks, and AE Direct Co LLC owns the portfolio of domain names for American Eagle Outfitters and Aerie.
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
This Panel finds that evidence in the Complaint establishes a sufficient nexus or link between the Complainants, such that they may be treated as a single entity in this proceeding. Moreover, the Panel does not need additional documentation to make this determination pursuant to ICANN Rule 12. The Complainants will be collectively referred to as “Complainant.”
FINDINGS:
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has shown no such rights and/or legitimate interests in the mark or in the domain name in which Respondent relies on a single letter “d” to distinguish Respondent’s disputed domain name from Complainant’s legally protected mark in order to promote its ownership.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent passively holds the disputed domain name and uses a protected identity, either of which supports this Panel’s findings that Respondent acted in bad faith in registering and holding the disputed domain name.
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 Complainant to 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.
Identical or Confusingly Similar:
Complainant operates in the clothing and apparel industry under several marks, including the AERIE mark. Complainant claims it has rights in the AERIE mark based on registrations held with the USPTO) (e.g., Reg. No. 3,486,591, registered Aug. 12, 2008). USPTO registrations are evidence of rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel finds that Complainant has rights and interests in the AERIE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <aeried.com> disputed domain name is confusingly similar to the AERIE mark because it merely adds a “d” to the end of the fully incorporated and unaltered mark, along with the “.com” gTLD. Complainant argues that this is a simple misspelling because the last “e” in the AERIE mark and the “d” are adjacent on a QWERTY keyboard, and also notes that the alteration also presents phonetic similarity with the AERIE mark. This Panel agrees. See Am. Online, Inc. v. Peppler, FA 103437 (Forum Feb. 22, 2002) (“The word “quest” and “crest” are similar in sound and are phonetically similar and thus these two words may be considered confusingly similar. Therefore, confusing similarity exists between <mapcrest.com> and Complainant’s MAP QUEST mark.”); see also TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”). Therefore, the Panel finds that Respondent’s <aeried.com> is confusingly similar to the AERIE mark under Policy ¶ 4(a)(i).
While Respondent contends that <aeried.com> domain is comprised of a common and generic or descriptive term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s legally protected mark; Complainant satisfied the elements of ICANN Policy 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent lacks rights or legitimate interests in <aeried.com>. Complainant contends that no relationship exists between Complainant and Respondent that confers rights in the domain name, and Respondent has not established that it is commonly known by <aeried.com>. Respondent, identified as “Daniel Cormier,” has not argued this point. The Panel finds that Respondent has shown no identity with and no rights to and/or legitimate interests in the domain name containing Complainant’s protected mark in its entirety. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Therefore, the Panel finds that Complainant satisfied Policy ¶ 4(c)(ii).
Further, Complainant asserts that Respondent’s site does not point to any active site, as shown in Exhibits L and M. Where a respondent has failed to make any active use of a domain name for a period of time, panels refrain from finding rights and/or legitimate interests. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, without evidence of use by Respondent, or intention to use the disputed domain name, the Panel finds no bona fide offering of goods or services or any legitimate noncommercial or fair use by Respondent.
The Panel notes specifically relative to Respondent’s argument that the primary term of <aeried.com> is a common dictionary word, aeried, and that therefore, Respondent is as free as Complainant to use the term on the Internet. That might be so if Respondent could actually show a registration prior to Complainant’s, and use or intent to use that did not encroach on Complainant’s protected commercial area. The Panel does not agree with Respondent’s contention here because Respondent has no use or planned use to support such a claim. For example, See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b) to show bad faith; however, the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent registered and used <aeried.com> in bad faith for two reasons, typosquatting and seeking to hide its identity with a protection service. Respondent typosquats, Complainant claims, by adding a “d” to the AERIE mark. Respondent does this, Complainant claims, in an effort to capture Internet traffic, by creating initial confusion as to the sponsor and source of the service. Respondent also engaged an identity protection service to conceal its address and contact information. Such conduct, standing alone, will support findings of bad faith registration and use. However, Respondent also passively holds the domain name and has done so since registration. Typosquatting is evidence of bad faith. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Merely adding a “d” to the AERIE mark, a key adjacent to the final letter of the mark, can constitute “typosquatting” and supports findings of bad faith under Policy ¶ 4(a)(iii).
Respondent also engaged a privacy service, and in doing so withheld identifying information. See Compl., at Attached Ex. A. The consensus view among panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances, which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). This Panel agrees that Respondent utilized a privacy shield in a manner that materially adversely affects or seeks to obscure the facts of the proceeding, and finds that Respondent registered and passively held the disputed domain name in bad faith under a Policy ¶ 4(a)(iii) evaluation.
Finally, Panels agree that passive holding supports findings of bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii). Respondent has allegedly held the disputed domain for five years. The Panel notes that Exhibits L and M demonstrate that Respondent has not made any use of <aeried.com> online. Therefore, the Panel finds that this inactive holding amounts to bad faith under Policy ¶ 4(a)(iii).
Relative to Respondent’s contention that <aeried.com> is comprised entirely of a common term that has many meanings apart from use in Complainant’s AERIE mark, Respondent contends that the registration and use of a domain name comprising such a common term is not necessarily done in bad faith. The Panel agrees that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such a common term, however, the Panel also notes that this common term has been made the subject of a registration in a given commercial area, but for the “d” that Respondent adds in his version. The way in which a Respondent uses such a term is to USE it (Emphasis added.) Plans to show development and/or future use also would assist a respondent in maintaining an argument such as Respondent’s here for common terms. Respondent did not do these things either and he did not address the three elements Complainant satisfied under the ICANN Policy. Respondent further was not the first to use the term in a domain name in its original form. The cases supporting Respondent on this issue require more than a mere filing and passive holding. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
The Panel finds that Respondent registered and passively held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeried.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 23, 2016.
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