Retail Royalty Company and AE Direct Co LLC v. Dhawal Prakash
Claim Number: FA1703001724230
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 Dhawal Prakash (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneaglefranchise.com>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2017; the Forum received payment on March 28, 2017.
On March 29, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <americaneaglefranchise.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 April 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@americaneaglefranchise.com. Also on April 3, 2017, 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 April 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant designs, markets, and retails clothing-related goods. Complainant uses the AMERICAN EAGLE mark in conjunction with its business practices. Complainant registered the AMERICAN EAGLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,033,841, registered Dec. 27, 2005). Additionally, Complainant registered the AMERICAN EAGLE mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA828589, registered July 25, 2012), China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 4531500, registered Aug. 7, 2009), and the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 5232335, registered Aug. 31, 2011).
2. Respondent’s <americaneaglefranchise.com> is identical and confusingly similar to Complainant’s AMERICAN EAGLE mark because it incorporates the mark in its entirety, adding the generic term “franchise” and the “.com” generic top level domain (“gTLD”). The inclusion of the word “franchise” increases consumer confusion, as it leads internet users to believe they are conducting franchise arrangements with Complainant.
3. Respondent does not have rights or legitimate interests in <americaneaglefranchise.com>. Respondent is not commonly known by the domain name. Complainant has not authorized or licensed Respondent to use the AMERICAN EAGLE mark in any regard, nor is Respondent affiliated with Complainant.
4. Respondent has not made a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain. Respondent’s <americaneaglefranchise.com> resolves to a website passing itself off as Complainant, and offering fraudulent franchise opportunities.
5. Respondent registered and is using <americaneaglefranchise.com> in bad faith. The domain name attracts internet users to Respondent’s website for commercial gain by passing itself off as Complainant. Furthermore, Respondent is offering fraudulent franchise opportunities with Complainant while phishing for consumers’ personal and financial information.
6. Further, it is clear Respondent registered <americaneaglefranchise.com> with actual knowledge of Complainant and its rights to the AMERICAN EAGLE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AMERICAN EAGLE mark. Respondent’s domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <americaneaglefranchise.com> domain name and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant designs, markets, and retails clothing-related goods. Complainant uses the AMERICAN EAGLE mark in conjunction with its business practices. Complainant registered the AMERICAN EAGLE mark with USPTO (e.g., Reg. No. 3,033,841, registered Dec. 27, 2005). Additionally, Complainant registered the AMERICAN EAGLE mark with CIPO (e.g., Reg. No. TMA828589, registered July 25, 2012), SAIC (e.g., Reg. No. 4531500, registered Aug. 7, 2009), and EUIPO (e.g., Reg. No. 5232335, registered Aug. 31, 2011). Registrations with the USPTO and other government trademark agencies are sufficient to show rights in a mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel holds that Complainant’s registrations with multiple government trademark agencies are sufficient to show rights in the AMERICAN EAGLE mark.
Complainant contends that Respondent’s <americaneaglefranchise.com> is identical and confusingly similar to Complainant’s AMERICAN EAGLE mark because it incorporates the mark in its entirety, adding the generic term “franchise” and the “.com” gTLD. Moreover, Complainant indicates that the inclusion of the word “franchise” increases consumer confusion, as it leads internet users to believe that Respondent’s resolving website permits persons going to that site to establish franchise arrangements with Complainant. Confusing similarity exists per Policy ¶ 4(a)(i) where a domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. See e.g., Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). Thus, the Panel concludes that Respondent’s <americaneaglefranchise.com> domain name is identical and/or confusingly similar to Complainant’s AMERICAN EAGLE mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <americaneaglefranchise.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant maintains that Respondent does not have rights or legitimate interests in <americaneaglefranchise.com>. To support its argument, Complainant states that Respondent is not commonly known by the domain name. WHOIS information identifies Respondent as “Dhawal Prakash.” Where “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name,” panels have determined that a respondent is not commonly known by a domain name within the meaning of Policy ¶ 4(c)(ii) does not apply. Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003).
Next, Complainant alleges it has not authorized or licensed Respondent to use the AMERICAN EAGLE mark in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain. The record shows that Respondent’s <americaneaglefranchise.com> domain name resolves to a website attempting to pass itself off as Complainant and offer fraudulent franchise opportunities. “It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant.” Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003). Moreover, a respondent’s “exploitation of the goodwill and consumer trust surrounding the [complainant’s] mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name.” Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002). Therefore, the Panel determines that Respondent lacks rights and legitimate interests in <americaneaglefranchise.com> pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using <americaneaglefranchise.com> in bad faith. As described above, Respondent’s domain name resolves to a webpage offering Internet users fraudulent franchise opportunities, while phishing for users’ personal and financial information. Such conduct has been found to constitute bad faith pursuant to Policy ¶ 4(b)(iv). See e.g., H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003).
Complainant states that Respondent registered <americaneaglefranchise.com> with actual knowledge of Complainant and its rights to the AMERICAN EAGLE mark. Complainant contends that in light of the fame and notoriety of Complainant's AMERICAN EAGLE mark, it is inconceivable that Respondent could have registered the <americaneaglefranchise.com> domain name without actual constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied 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 <americaneaglefranchise.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 4, 2017
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