American Eagle Outfitters, Inc. and Retail Royalty Company v. Prakesh Kumar
Claim Number: FA2306002047460
Complainant is American Eagle Outfitters, Inc. and Retail Royalty Company (“Complainant”), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia. Respondent is Prakesh Kumar (“Respondent”), AE.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeofranchise.com>, registered with DreamHost, LLC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on June 5, 2023; Forum received payment on June 5, 2023.
On June 5, 2023, DreamHost, LLC confirmed by e-mail to Forum that the <aeofranchise.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, LLC 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 June 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2023 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@aeofranchise.com. Also on June 7, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants: American Eagle Outfitters, Inc. and Retail Royalty Company. 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.” 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.” Previous panels have interpreted 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 the present case, the Complainants has stated that American Eagle Outfitters is the parent company of Retail Royalty Company, and that American Eagle Outfitters and Retail Royalty Company have joint standing as Complainant because they are affiliated companies, and each has an interest in the subject matter of the Complaint.
Although the Complainants does not provide any official documentation supporting the statement, the Panel notes that www.sec.gov lists Retail Royalty Company as a subsidiary of American Eagle Outfitters, and other documentation provided by the Complainants – such as copies of the Certificates of Registration for the trademarks with filing history – support the affiliation statement.
The Panel therefore accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Panel will therefore treat them together as a single entity in this proceeding. The Complainants will hereafter be collectively referred to as “Complainant”, except where otherwise specifically identified.
A. Complainant
The Complainant is a leading global specialty retailer that designs, markets, and sells apparel and other products. Complainant asserts rights in the AEO trademarks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,877,686, registered February 7, 1995). Complainant also asserts common law rights in the AEO trademarks. The <aeofranchise.com> domain name is identical or confusingly similar to Complainant’s trademarks because the disputed domain name prominently starts with and features the identical AEO trademark and merely adds the term “franchise” as well as the generic top level domain (“gTLD”) “.com”.
Respondent lacks rights or legitimate interests in the <aeofranchise.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the AEO trademarks. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name previously resolved to a website impersonating Complainant. The disputed domain name now resolves to an inactive website.
Respondent registered and uses the <aeofranchise.com> domain name in bad faith. Respondent is creating a likelihood of confusion with Complainant’s trademarks. The disputed domain name previously resolved to a website impersonating Complainant. The disputed domain name now resolves to an inactive website. Additionally, Respondent had actual knowledge of Complainant’s rights in the AEO trademarks prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,026,269 AEO (word), registered September 13, 2011 for services in Intl Class 35;
No. 1,877,686 AEO (word), registered February 7, 1995 for goods in Intl Class 25;
No. 4,496,310 AEO (word), registered March 11, 2014 for goods in Intl Class 3;
No. 2,086,693 AMERICAN EAGLE OUTFITTERS (word), registered August 12, 1997 for goods and services in Intl Classes 25 and 42; and
No. 3,797,646 AMERICAN EAGLE (word), registered June 1, 2010 for services in Intl Class 35.
The disputed domain name <aeofranchise.com> was registered on November 17, 2021.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the AEO trademarks (e.g. Reg. No. 1,877,686, registered February 7, 1995) based upon registration with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Thus, the Panel find that Complainant has demonstrated rights in the AEO trademarks per Policy ¶ 4(a)(i).
Complainant also asserts common law rights in the AEO trademarks. The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate common law rights in the trademark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”).
Common law rights can be established through a showing of secondary meaning within the trademark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”).
Here, Complainant asserts that Complainant opened its first store in the United States in 1977, and now operates all over the world. Specifically, Complainant has provided documentation to prove that Complainant ships products to more than 80 countries worldwide. Additionally, Complainant is highly popular on social media and has more than 3,700,000 followers on Instagram. Based on the supporting evidence provided by the Complainant, the Panel find that Complainant it has common law rights in the AEO trademarks per Policy 4(a)(i).
Complainant contends that Respondent’s <aeofranchise.com> domain name is identical or confusingly similar to Complainant’s trademarks. The addition of a generic term as well as a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
Here, the disputed domain name prominently starts with and features the identical AEO trademark and merely add the term “franchise” as well as the “.com” gTLD. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademarks per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant claims that Respondent lacks rights or legitimate interests in the <aeofranchise.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the AEO trademarks. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Prakesh Kumar” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the AEO trademarks. As such, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that the <aeofranchise.com> domain name previously resolved to a website impersonating Complainant and its AEO trademarks and brand, and in doing so, hosted content infringing Complainant’s various intellectual property rights, such as its trademark rights in the AEO trademarks and its copyrighted materials. Diverting Internet users to an infringing website do not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Here, Complainant provides screenshot evidence from the prior webpage located at the disputed domain name. The Panel thereby find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that the <aeofranchise.com> domain name now resolves to a webpage that displays the message that the page “can’t be reached” and is effectively inactive and inaccessible. Prior Panels have held that a failure to make an active use of a disputed domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Here, Complainant provides screenshot evidence showing the current use of the disputed domain name. Based on that, the Panel agrees with the Complainant’s conclusion, and find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <aeofranchise.com> domain name in bad faith due to the fact that Respondent intentionally attempted to attract, for commercial gain, Internet users to the websites located at the disputed domains by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the disputed domains, the associated websites, and/or Respondent’s activities. Such use is evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”).
Here, Complainant provides screenshot evidence of the previous and current webpages hosted at the disputed domain. Accordingly, the Panel find that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that the <aeofranchise.com> domain name previously resolved to a webpage impersonating Complainant and its AEO trademarks and brand, and in doing so, hosted content infringing Complainant’s various intellectual property rights. An attempt to pass off in this way indicates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products).
Here, Complainant provides screenshot evidence from the prior webpage located at the disputed domain name. The Panel find that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant states that the <aeofranchise.com> domain name now resolves to a webpage that indicates the page “can’t be reached” and is effectively inactive and inaccessible. Failure to make an active use of a disputed domain name evinces bad faith per Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Here, Complainant provides screenshot evidence showing the current use of the disputed domain name.
The Panel notes that such inactive use, can indeed cause negative impact on a complainant’s business and trademark, as “can’t be reached” indicate that the trademark owners business is down or that there are some other problems related to the trademark. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant asserts that Respondent had actual or constructive knowledge of Complainant’s rights in the AEO trademarks prior to registration of the <aeofranchise.com> domain name. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the AEO trademarks prior to registration of the disputed domain name based on the fact that Complainant has continuously and exclusively used the AEO trademarks since at least as early as 1977 and since that time has become internationally famous in the clothing industry. The Panel agree with Complainant and find that Respondent did have actual knowledge of Complainant’s Marks, demonstrating bad faith under 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 <aeofranchise.com> domain name be TRANSFERRED from Respondent to Complainant, identified as Retail Royalty Company (being the registered owner of the AEO trademarks).
Petter Rindforth, Panelist
Dated: July 10, 2023
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