DECISION

 

American Eagle Outfitters and Retail Royalty v. Client Care / Web Commerce Communications Limited

Claim Number: FA2309002063216

PARTIES

Complainant is American Eagle Outfitters and Retail Royalty ("Complainant"), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americaneaglesuk.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelist in this proceeding.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 25, 2023; Forum received payment on September 25, 2023.

 

On September 25, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <americaneaglesuk.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 September 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@americaneaglesuk.com. Also on September 27, 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 October 18, 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.

 

RELIEF SOUGHT

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."  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." 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 the present case, the Complainants have 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 do 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.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant is a leading global specialty retailer that designs, markets, and sells apparel and other products. Complainant asserts rights in the AMERICAN EAGLE trademark based upon registration with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 3,033,841 registered December 27, 2005), as well as in UK and the European Union. Complainant also asserts common law rights in the AMERICAN EAGLE trademark. In addition, Complainant owns copyright and trademark rights in several designs featuring its eagle designs.

 

Respondent does not have any rights or legitimate interests in the Domain because it trades on the goodwill of Complainant's AMERICAN EAGLE trademarks, and Respondent's use of the AMERICAN EAGLE trademarks is illegitimate and unauthorized. Respondent is not and has never been a licensee of Complainant or otherwise authorized to use Complainant's trademarks or other intellectual property.

 

The disputed domain name was registered in bad faith on August 30, 2023, which is long after Complainant began using and registering the AMERICAN EAGLE trademarks in the U.S. and elsewhere and after Complainant's AMERICAN EAGLE trademarks became internationally famous.

 

It is indisputable that <americaneaglesuk.com> was registered and is used in bad faith with actual knowledge of Complainant's prior rights in its AMERICAN EAGLE trademarks and for the express purpose of trading on the goodwill of Complainant's trademarks. This conclusion is inescapable because, among other things, the Domain prominently starts with and features Complainant's identical AMERICAN EAGLE trademark and merely pluralizes the trademark by adding the letter "s" and adds the two-letter geo descriptor UK, which refers to the United Kingdom, and the domain extension ".com." Therefore, the disputed domain name immediately conveys the impression that it emanates from, or is otherwise connected to, affiliated with, and/or sponsored or approved by, Complainant, which is not the case. This false impression is exacerbated by the unauthorized and infringing content displayed on the website located at the domain name.

 

The disputed domain name is used to resolve to a website that conveys the false impression that the website is Complainant's official website, or one of its official websites, such as for its AMERICAN EAGLE brand for the United Kingdom market, or that the website is otherwise affiliated, connected, or associated with, or approved or sponsored by, Complainant, none of which is true. Specifically, the website purports to provide online retail store services selling Complainant's AMERICAN EAGLE brand clothing.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 2,086,693 AMERICAN EAGLE OUTFITTERS (word), registered August 12, 1997 for goods and services in Intl Classes 25 and 42;

No.3,033,841 AMERICAN EAGLE (word), registered December 27, 2005 for goods in Intl Class 25, and

No. 3,797,646 AMERICAN EAGLE (word), registered June 1, 2010 for services in Intl Class 35.

 

The Complainant is also the owner of:

UK National Trademark registration No. UK00002555526 AMERICAN EAGLE (word), registered October 26, 2012 for goods and services in Intl Classes 9, 14, 25 and 35; and

European Union Trade Mark registration No. 015760523 AMERICAN EAGLE (word), registered January 9, 2017 for goods and services in Intl Classes 3, 9, 14, 25 and 35.

 

The disputed domain name <americaneaglesuk.com> was registered on August 30, 2023.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the AMERICAN EAGLE trademark based upon multiple trademark agencies, including the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 3,033,841 registered December 27, 2005), The Intellectual Property Office of United Kingdom ("GOV.UK") (e.g. Reg. No. UK00002555526 registered October 26, 2012), and European Union Intellectual Property Office ("EUIPO") (e.g. Reg. No. 015760523 registered January 19, 2017). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a trademark according to Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) ("Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i)."). Therefore, the Panel find that Complainant has rights in the AMERICAN EAGLE trademark under Policy ¶ 4(a)(i) based on its registration with multiple trademark agencies.

 

Complainant also asserts common law rights in the AMERICAN EAGLE trademark. 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 11,600,000 followers on Facebook, and more than 3,800,000 followers on Instagram. Based on the supporting evidence provided by the Complainant, the Panel find that Complainant has common law rights in the AMERICAN EAGLE trademark per Policy 4(a)(i).

 

Complainant contends that Respondent's 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 starts with the identical AMERICAN EAGLE trademark, only adding the letter "s" – indicating that the trademark is written in plural form, followed by the country code for United Kingdom, "UK" (thereby only indicating the country where the goods/services are available), and the ".com" gTLD.

 

Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant's trademark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 disputed domain names as Respondent is not commonly known by any of the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the AMERICAN EAGLE trademark. 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 names lists the registrant as "Client Care / Web Commerce Communications Limited". As such, the Panel find that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Complainant argues that the <americaneaglesuk.com> domain name points to a website impersonating Complainant and its AMERICAN EAGLE trademarks and brand, and in doing so, hosted content infringing Complainant's various intellectual property rights, such as its trademark rights in the AMERICAN EAGLE  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 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).

 

Registration and Use in Bad Faith

The Complainant argues that Respondent registered and uses the <americaneaglesuk.com> domain name in bad faith as Respondent registered the disputed domain name to compete with Complainant, falsely identifying itself as related to – or even to be – the Complainant, and disrupting Complainant's business. Registration of a close to identical domain name with the intent to disrupt business by passing off as a complainant is indeed clear evidence of bad faith registration and use per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent's use of the disputed domain name to offer competing loan services disrupts Complainant's business under Policy ¶ 4(b)(iii)).

 

As noted above, Complainant provide screenshots of the disputed domain name offering identical goods/services as the Complainant, and falsely identifying itself as the Complainant by copying the Complaint's web sites, including the Complainant's figurative eagle trademark, and adding references directly and falsely indicating relationship with the Complainant. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <americaneaglesuk.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Petter Rindforth, Panelist

Dated: October 22, 2023