Retail Royalty Company and AE Direct Co LLC v. William Sanchez and Reyes Co.
Claim Number: FA1612001708266
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 William Sanchez and Reyes Co. (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aerieco.com>, registered with eNom, Inc..
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 16, 2016; the Forum received payment on December 16, 2016.
On December 19, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <aerieco.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 December 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2017 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@aerieco.com. Also on December 22, 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.
Respondent sent three E-mails to the Forum (see below) but did not submit a formal Response. Having received no formal Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 25, 2017, 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 any 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 clothing and accessories globally under the AERIE Marks at Complainant’s AERIE retail stores, at select AMERICAN EAGLE OUTFITTERS retail stores, and through Complainant’s website at <ae.com/aerie>, to which Complainant’s registered domain name <aerie.com> redirects. Complainant offers well-designed, high-quality merchandise at affordable prices. Complainant ships its products to consumers in 81 countries around the world. AMERICAN EAGLE OUTFITTERS and AERIE products are available at 141 international stores operated by licensees in 22 countries. Complainant registered the AERIE mark in the United States Patent Office in 2008. Additionally, Complainant registered the AERIE mark with government agencies in multiple countries, including Canada, Mexico, Brazil, India, and Hong Kong.
According to Complainant, the disputed domain name is confusingly similar to its AERIE mark because it incorporates the mark in its entirety, adding the generic term “co” and the “.com” generic top-level domain (“gTLD”).
Complainant alleges that Respondent does not have any rights or legitimate interests in disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the AERIE mark in any respect, nor is Respondent affiliated with Complainant. Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate non-commercial or fair use of the domain name. Respondent has created a false association with Complainant to confuse and redirect Internet users to Respondent’s website, presumably for Respondent’s financial gain. The disputed domain name resolves to a webpage displaying the AERIE mark and offering goods similar to those offered by Complainant, giving the appearance that Respondent is affiliated with Complainant.
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent is presumably attempting to pass itself off as Complainant. The disputed domain name is intended to confuse users and disrupt Complainant’s business. Additionally, Respondent’s site contains a “contact us” page, often associated with phishing schemes to obtain customers’ personal information. Respondent possessed actual knowledge of Complainant’s mark and its rights therein when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, in an E-Mail to the Forum, Respondent stated: “In no way, we are trying to confuse internet users to believe we are AEO. But to comply, I will do as they say and transfer the domain name <aerieco.com>.”
In subsequent E-Mails to the Forum, Respondent stated that he had not been able to transfer the disputed domain name, but did not revoke his previous agreement to transfer it.
Preliminary Issue: Multiple 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.”
There are two Complainants in this matter: Retail Royalty Company and Complainant AE Direct Co LLC. Complainants argue that they are related companies, being wholly owned subsidiaries of American Eagle Outfitters, Inc. Retail Royalty Company owns the trademark registrations for the AERIE marks, and AE Direct owns the portfolio of domain names for American Eagle Outfitters and Aerie.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow 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.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.
For the reasons set forth below, the Panel will not make any findings of fact.
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(f), 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 (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.”).
In the present 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.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <aerieco.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 25, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page