Retail Royalty Company and AE Direct Co LLC v. huang hou huai
Claim Number: FA1801001768425
Complainant is Retail Royalty Company and AE Direct Co LLC (“Complainant”), represented by Victoria J.B. Doyle of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is huang hou huai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeo.online>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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 January 23, 2018; the Forum received payment on January 23, 2018.
On February 2, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <aeo.online> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2018 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@aeo.online. Also on February 2, 2018, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. However, Respondent did send e-mails to the Forum, see below.
On February 27, 2018, 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 casual, current clothing, accessories, basics, and footwear targeting 15- to 25-year-olds under the AEO mark at Complainant’s American Eagle Outfitters retail stores and through its website at <ae.com>. Complainant offers well-designed, high-quality merchandise at affordable prices, and is one of the top-ranking youth lifestyle brands. Complainant opened its first AEO retail store in the United States in 1977, and now operates over 900 retail stores around the world, and currently ships products to more than 80 countries worldwide. Complainant has rights in the AEO mark through its registration of the mark in the United States in 1995. The mark is also registered elsewhere around the world.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s mark as it includes the mark and merely adds the generic top-level domain (“gTLD”) “.online.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “Huang Hou Huai.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Additionally, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is offering the domain name for sale for three thousand U.S. Dollars ($3,000), an amount far in excess of registration costs. Further, Respondent is using the domain name to direct Internet users to a click-through revenue portal with sponsored links to Complainant’s competitors. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith by attempting to sell the domain name for profit. Further, Respondent has attempts to commercially benefit from the goodwill and reputation associated with Complainant’s AEO marks by offering click-through links to Complainant’s competitors. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent did send two e-mails to the Forum, in English. In those e-mails he states, in pertinent part: “(aeo.online) is the plan that I did not sell for the project” and “I do not give up (aeo.online) the domain name plan, if you want to use this domain name, please make out the conditions as compensation for my project.”
Complainant owns the mark AEO, with rights dating back to at least 1995.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain name has been offered for sale for an amount in excess of out-of-pocket costs, and it resolves to a web site that displays click-through advertising links for products that compete with those of Complainant.
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.”).
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the Chinese the language of the proceedings.
Pursuant to UDRP Rule 11(a), the Panel has the authority determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”); see also FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
In the present case, the gTLD used for the domain name (“online”) is an English word and demonstrates that Respondent is familiar with English. All of the content on the resolving domain is in the English language. Respondent has communicated with the Forum in the English language.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
The disputed domain name is identical to Complainant’s mark as it includes the mark and merely adds the gTLD “.online.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the <aeo.online> domain name is identical to the AEO mark under Policy ¶4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Huang Hou Huai” as the registrant. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent offers the disputed domain name for sale for $ 3000. Offering a confusingly similar domain name for sale to the public can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). The Panel finds that Respondent offers the disputed domain name for sale in excess of out-of-pocket expenses, indicative of possessing no rights and legitimate interests under Policy ¶ 4(a)(ii).
Further, Respondent uses the disputed domain name to resolve in a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to benefit commercially from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Accordingly, the Panel finds that Respondent offers competing hyperlinks, failing to bestow rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent is attempting to sell the domain name for profit. A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs can evidence bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).) As such, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Further, also as already noted, Respondent attempts to benefit commercially from the goodwill and reputation associated with Complainant’s AEO marks by offering click-through links to competing products. Attempting to use a confusingly similar domain name to trade off on the goodwill associated with a complainant’s mark for commercial gain can demonstrate bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Accordingly, the Panel finds that Respondent offers competing hyperlinks in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeo.online> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 27, 2018
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