American Girl, LLC v. Domain Deluxe c/o
Domain Admin
Claim
Number: FA0505000474902
Complainant is American Girl, LLC (“Complainant”), represented
by Lori S. Meddings, of Michael Best and Friedrich LLP, 100 East Wisconsin Avenue, Milwaukee, WI 53202. Respondent is Domain Deluxe c/o Domain Admin (“Respondent”), 16/F
Cheung Kong Center 2 Queens Road Central, Hong Kong, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americnagirl.com>, registered with Nameview,
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 19, 2005.
On
May 12, 2005, Nameview, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <americnagirl.com> is registered with Nameview,
Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent
is bound by the Nameview, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
May 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 14, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@americnagirl.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
June 20, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <americnagirl.com>
domain name is confusingly similar to Complainant’s AMERICAN GIRL mark.
2. Respondent does not have any rights or
legitimate interests in the <americnagirl.com> domain name.
3. Respondent registered and used the <americnagirl.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
American Girl, LLC, is a direct marketer, distributor, and retailer of a famous
line of products that includes books featuring fictional characters, dolls
based on those characters, doll clothing and accessories, and clothing for
girls.
Complainant
holds a trademark registration with the United States Patent and Trademark Office
for the AMERICAN GIRL mark (Reg. No. 2,125,919 issued December 30, 1997).
Respondent
registered the <americnagirl.com> domain name on April 25,
2003. Respondent is using the disputed
domain name to redirect Internet users to its adult-oriented websites featuring
visual images and verbal descriptions of nude adults, adults engaging in sexual
acts, and other audio and visual materials of a sexually-explicit nature.
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."
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(e), 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 in the Complaint as true. See
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that, in the absence of a response, the panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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).
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.
Complainant has
established in this proceeding that it holds rights in the AMERICAN GIRL mark
through registration with the United States Patent and Trademark Office. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
The Panel finds that Respondent’s <americnagirl.com> domain name is confusingly similar to
Complainant’s AMERICAN GIRL mark because the domain name contains Complainant’s
mark in its entirety with the only differences being the transposition of the
letters “a” and “n” in the word “american,” the omission of the space between
the words “american” and “girl,” and the addition of the generic top-level
domain “.com” to the mark. Such minor
alterations to Complainant’s registered mark do not counteract the confusingly
similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Google
Inc. v. Jon G., FA 106084 (Nat. Arb. Forum
Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the
complainant’s GOOGLE mark and noting that “[t]he transposition of two letters
does not create a distinct mark capable of overcoming a claim of confusing
similarity, as the result reflects a very probable typographical error”); see
also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name
<peir1.com> is confusingly similar to the complainant's PIER 1 mark); see
also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the domain
name <geociites.com> is confusingly similar to Complainant’s GEOCITIES
mark); see also Planned Parenthood Fed’n of Am. v. Bucci,
42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), aff’d 152 F.3d 920 (2d Cir. 1998), cert.
denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and
defendant’s <plannedparenthood.com> domain name nearly identical); see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER
RE, “as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <americnagirl.com>
domain name. When Complainant makes a prima
facie case in support of its assertions, the burden shifts to Respondent to
show that it does have rights or legitimate interests in the domain name. Due to Respondent’s failure to respond to
the Complaint, the Panel assumes that Respondent does not have rights or
legitimate interests in the <americnagirl.com> domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant has
asserted that the respondent does not have rights or legitimate interests with
respect to the domain name it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
does not have rights or legitimate interests is sufficient to shift the burden
of proof to the respondent to demonstrate that such a right or legitimate
interest does exist); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that
the respondent does not have rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name).
Respondent is
using the disputed domain name to redirect Internet users to adult-oriented
websites. The Panel finds that
Respondent’s use of a domain name that is confusingly similar to Complainant’s
AMERICAN GIRL mark to redirect Internet users to adult-oriented websites is not
a use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215
(WIPO May 26, 2003) (finding that “use of the disputed domain name in
connection with pornographic images and links tarnishes and dilutes
[Complainant’s mark]” and is evidence that the respondent has no rights or
legitimate interests in the disputed domain name); see also Isleworth Land
Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding that the respondent’s use of its domain name to link
unsuspecting Internet traffic to an adult oriented website, containing images
of scantily clad women in provocative poses, did not constitute a connection
with a bona fide offering of goods or services or a noncommercial or fair use);
see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb.
Forum June 2, 2003) (holding that the use of domain names to divert Internet users to a website that features
pornographic material, has been “consistently held” to be neither a bona fide
offering of goods or services . . . nor a legitimate noncommercial or fair
use).
Additionally,
the fact that Respondent’s <americnagirl.com> domain name is
merely a typosquatted variation of Complainant’s AMERICAN GIRL mark is further
evidence that Respondent does not have rights or legitimate interests in the <americnagirl.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com> and <ltdcommodaties.com> disputed domain
names were typosquatted versions of Complainant's LTD COMMODITIES mark and
"Respondent's 'typosquatting' is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names."); see also IndyMac
Bank F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights or
legitimate interests in the disputed domain names because it "engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter 'x' instead of the letter
'c.'").
Respondent has
not offered any evidence and, there is no proof in the record to suggest, that
Respondent is commonly known by the <americnagirl.com> domain
name. Moreover, Complainant has not
authorized or licensed Respondent to use its AMERICAN GIRL mark. Therefore, Respondent has not established
that it has rights or legitimate interests in the <americnagirl.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
registration of the <americnagirl.com> domain name, a domain name
that incorporates Complainant’s registered mark and simply transposes the
letter “a” and the letter “n” in the word “american”, suggests that Respondent
knew of Complainant’s rights in the AMERICAN GIRL mark. Additionally,
Complainant’s trademark registration on file at the United States Patent and
Trademark Office gave Respondent constructive notice of Complainant’s mark.
Thus, the Panel finds that Respondent chose the <americnagirl.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the domain names); see also Samsonite Corp. v. Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly known mark at the time of
registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those
seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel also
finds that Respondent’s use of a domain name that transposes letters in
Complainant’s AMERICAN GIRL mark constitutes typosquatting and evidences
Respondent’s bad faith registration and use of the <americnagirl.com>
domain name pursuant to Policy ¶ 4(a)(iii).
See Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is
the intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc. v. Zuccarini,
FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent registered
and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶
4(a)(iii) because the name was merely a typosquatted version of the
complainant’s ZONEALARM mark.).
Moreover,
Respondent’s use of the <americnagirl.com> domain name to redirect
Internet users to an adult-oriented website taints Complainant’s mark and is
evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar.
18, 2003) (finding that the respondent’s tarnishing
use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Six
Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“Whatever
the motivation of Respondent, the diversion of the domain name to a pornographic
site is itself certainly consistent with the finding that the Domain Name was
registered and is being used in bad faith.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americnagirl.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
June 30, 2005
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