American Girl, LLC v. John & Belinda
Salmon
Claim Number: FA0507000524750
PARTIES
Complainant
is American Girl, LLC (“Complainant”),
represented by Lori S. Meddings of Michael Best & Friedrich LLP, 100 East Wisconsin Avenue, Milwaukee, WI, 53202. Respondents are John & Belinda Salmon (“Respondent”), 19109 Black Oak Rd,
Sonora, CA 95370, US
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <americangirlclothes.com>,
registered with Network Solutions, Inc.
PANEL
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.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 27, 2005.
On
July 29, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the <americangirlclothes.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
August 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 22,
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@americangirlclothes.com by e-mail.
A
timely Response was received and determined to be complete on August 18, 2005.
A
timely Additional Submission was received from Complainant on August 23, 2005.
On August 26, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Clive Elliott as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
is a direct marketer, distributor and retailer of a line of products that
includes books featuring fictional character dolls, doll clothing and
accessories and clothing for girls along with other related goods and
services. Complainant owns and operates
websites to sell its dolls and doll clothes to Internet consumers. Complainant uses the AMERICAN GIRL mark in
interstate commerce and has done so since 1986. Complainant is the proprietor
of approximately 100 federal trade mark registrations and applications for the
term AMERICAN GIRL and other marks incorporating this phrase. The goods/services include dolls, doll
clothing and doll accessories, Internet related services and retail
services.
Complainant
notes that it sells its AMERICAN GIRL products on a website located at the
<americangirl.com> domain name.
It points out that Complainant and Respondent are direct competitors in
the area of doll clothing, shoes, and accessories. The domain name fully incorporates Complainant’s mark and adds
only the word ‘clothes” and a generic top level domain. It submits that the word “clothes,” when
used in conjunction with Complainant’s mark, is descriptive of one of
Complainant’s primary product lines.
Complainant
asserts that Respondent is not commonly known by the name AMERICAN GIRL or any
derivation. Respondent’s business was
previously known as “Belinda’s” and is currently known as “Doll Clothes ‘R”
Me”.
Complainant
alleges that Respondent competes with Complainant in the doll clothes and
accessories business and that Respondent has used the <americangirlclothes.com> domain name to offer its competing products. Complainant states that before it
notified Respondent of the dispute, Respondent was using the <americangirlclothes.com> domain name to divert Internet users searching
for Complainant’s products to Respondent’s website, where Respondent offered
similar goods.
It
is submitted that Respondent is passively holding the domain name because the
domain name does not resolve to an active website and that Respondent
registered the domain name primarily for the purpose of disrupting the business
of Complainant and redirecting consumers searching for Complainant to
Respondent’s website. Complainant
argues that Respondent has registered and is retaining the domain name
primarily for the purpose of selling the domain name registration to
Complainant for valuable consideration in excess of Respondent’s out-of-pocket
costs directly related to the domain name.
Finally,
Complainant says that Respondent registered the domain name, which is
confusingly similar to Complainant’s mark despite actual or constructive
knowledge of Complainant’s rights in the AMERICAN GIRL mark.
B. Respondent
Respondent
is a married couple who makes and sells clothes and shoes for 18” and 15”
dolls, including those made by AMERICAN GIRL.
The selling of doll clothes began as a form of therapy to help in the
grieving process after the loss of Respondent’s son. Respondent claims to have
had no idea as to how to go about selling on the Internet, so Respondent went
to a local Internet provider for advice.
The Internet provider came up with the domain name which Respondent has
been using for over seven years.
Respondents
says that the name “American Girl” takes in a wide range of categories and that
the name “americangirlclothes” is self explanatory when going to the relevant
Internet site.
In
1997, when the contested domain name was registered, Respondent claims that its
understanding was that any string of characters could be used to create a
domain name and that trademarks were not an issue. However, because of the similarity of Complainant’s name and the
contested domain name, Respondent made a point of informing any visitor to the
site that Respondent was in no way associated with Complainant and went as far
as to create a link to Complainant’s home page.
Respondent
asserts that after seven years (without any complaints), Complainant demanded
that Respondent shut down the web site because of Complainant’s belief that
people would confuse Respondent with Complainant. Respondent states it reluctantly did as it was asked and moved to
a new domain name. Since shutting down
the site, Respondent decided to create a new “information” site, using the domain name in question, where doll
enthusiasts can e-mail pictures of unique and unusual clothing used to dress
the dolls along with a description and any comments to post on the site.
Respondent
asserts that in 2004, the Internet sales were very poor and Respondent had to
look at new options. One was to sell
the whole business and because Complainant seemed interested, Respondent
inquired if Complainant would like to purchase Respondent’s site as well. Respondent then made a decision not to sell.
Respondent
also states that it is not planning to cyber squat on the disputed name
but would like to use the domain name in a way that would be of benefit to
Respondent’s previous customers.
Respondent contends that it was simply using a domain name that included
common or descriptive terms to describe the content of its website
Respondent
asserts that it attempted to prevent any likelihood of confusion between its
website and Complainant by informing any visitor to the website that Respondent
was not associated with Complainant and by displaying a link to Complainant’s
website.
C.
Additional Submissions
Complainant
responded to the Response submitting that Respondent did not deny any of
Complainant’s allegations and that the content of the Response was in any event
irrelevant.
Complainant
further states that Internet users searching for AMERICAN GIRL doll clothes and
related products may simply enter the domain name that describes those products
– “American Girl doll clothes”. It
submits that once they arrive at the Respondent’s website to find doll clothes
that are not made by Complainant, or to find an informational site, confusion
has already occurred.
Complainant
also submits that disclaimers and links to Complainant’s website do not remedy
“initial interest confusion”.
In
terms of the seven year delay, Complainant contends that the doctrine of laches
is not generally applicable in an ICANN Proceeding and that it should not be
applicable in this case. It asserts
that Complainant did not discover Respondent’s use of the domain name until
October 2004 and then promptly acted to protect and preserve its rights.
Finally,
it submits that the “reasonable belief” defense is not available to Respondent
because Respondent admits that it was aware of “the similarity of the
Complainant’s name and the domain name”.
FINDINGS
Having reviewed
all of the papers and submissions, the Panel finds that:
(1) the domain name registered by the
Respondent is confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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
asserts that it has established rights in the AMERICAN GIRL mark through its
registration of the mark with the United States Patent and Trademark Office (“USPTO”)
and continuous use of the mark in commerce since 1986. See 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.”); see also
U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum
Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is
registrable, by so issuing a registration, as indeed was the case here, an
ICANN panel is not empowered to nor should it disturb that determination.”); see
also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”).
Furthermore,
Complainant contends that the <americangirlclothes.com> domain
name registered by Respondent is confusingly similar to Complainant’s AMERICAN
GIRL mark, because the disputed domain name includes Complainant’s mark in its
entirety and adds only the generic or descriptive term “clothes” and the
generic top-level domain (“gTLD”) “.com.”
Additionally, Complainant argues that the term “clothes” added to
Complainant’s mark is descriptive of one of Complainant’s primary product
lines. The Panel may determine that
these changes are insufficient to distinguish the disputed domain name from
Complainant’s mark and that, therefore, the disputed domain name is confusingly
similar to the mark under Policy ¶ 4(a)(i).
See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants.").
On
this basis the ground is established.
The
Panel should be aware that once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 has no 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 Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once the complainant asserts that the respondent has no 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).
Complainant
argues that Respondent is not commonly known by the <americangirlclothes.com>
domain name and that Complainant has not given Respondent permission to use
Complainant’s mark for any purpose.
Thus, the Panel may find that Respondent has not established rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
Complainant
asserts that before Complainant notified Respondent of the dispute, Respondent
was using the <americangirlclothes.com> domain name to divert
Internet users searching for Complainant’s products to Respondent’s website,
where Respondent offered similar goods.
The Panel may find that such competitive use is not in connection with a
bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see
also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Coryn
Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003)
(finding that the respondent was not using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
Complainant
further asserts that the <americangirlclothes.com> domain name
does not currently resolve to a website and that Respondent is, therefore,
passively holding the domain name. If
the Panel finds that Respondent is passively holding the disputed domain name,
the Panel may further conclude that Respondent’s non-use of the domain name is
not in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(“Merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see
also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001)
(finding no rights or legitimate interests in the domain name
<solgarvitamins.com> where the respondent merely passively held the
domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat.
Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive
holding of the domain name does not establish rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii).”).
Again
the ground is made out.
Complainant
argues that Respondent offered to sell the <americangirlclothes.com>
domain name registration to Complainant on December 15, 2004, but rejected
Complainant’s offer to pay only Respondent’s out-of-pocket costs associated
with the domain name registration and transfer fees. The Panel may find that these circumstances are evidence that
Respondent registered the disputed domain name primarily for the purpose of
selling the domain name registration to Complainant, the owner of the AMERICAN
GIRL mark, for consideration in excess of respondent’s out-of-pocket
expenses. See Pocatello Idaho
Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb.
21, 2002) ("What makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner."); see
also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that
“general offers to sell the domain name, even if no certain price is demanded,
are evidence of bad faith”); see also John C. Nordt Co. v. Jewelry Exch.,
FA 96789 (Nat. Arb. Forum Apr. 11, 2001) (finding that the respondent exhibited
bad faith when the respondent, a competitor of the complainant, attempted to
sell a domain name, which was identical to the complainant’s MOTHER’S RING
mark, to the complainant for a profit).
Complainant
alleges that Respondent competes with Complainant in the doll clothes and
accessories business and that Respondent has used the <americangirlclothes.com>
domain name to offer its competing products.
The Panel may find that Respondent registered the disputed domain name
to disrupt the business of a competitor and that this is evidence of bad faith
registration and use under Policy ¶ 4(b)(iii).
See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding that, given the competitive relationship between the
complainant and the respondent, the respondent likely registered the contested
domain name with the intent to disrupt the complainant's business and create
user confusion); see also S. Exposure v. S.
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
that the respondent registered the domain name in question to disrupt the
business of the complainant, a competitor of the respondent); see also
Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
The
Panel may also find that Respondent has used the <americangirlclothes.com>
domain name to intentionally attract Internet users searching for Complainant’s
doll products to Respondent’s commercial website by using Complainant’s
AMERICAN GIRL mark to cause confusion as to Complainant’s affiliation with
Respondent’s website. The Panel may
further conclude that such a practice on the part of Respondent is evidence of
bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with the complainant’s well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see
also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the users into believing that the complainant is the source
of or is sponsoring the services offered at the site); see also
MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a
domain name confusingly similar to the complainant’s mark and the domain name
was used to host a commercial website that offered similar services offered by
the complainant under its mark).
Furthermore,
Complainant asserts that Respondent registered the <americangirlclothes.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the AMERICAN GIRL mark. Complainant
contends that its registration of the mark with the USPTO confers upon
Respondent constructive knowledge of Complainant’s rights. Furthermore, Complainant argues that the
fact that Respondent is in the same business as Complainant and Respondent’s
use of Complainant’s dolls to model Respondent’s doll clothing on Respondent’s
website are circumstances that suggest that Respondent had actual knowledge of
Complainant’s mark. The Panel may find
that Respondent registered the disputed domain name with actual or constructive
knowledge of Complainant’s rights in its mark and that this is evidence of bad
faith registration and use under Policy ¶ 4(a)(iii). See 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.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the respondent’s
website was obvious, the respondent “must have known about the Complainant’s
mark when it registered the subject domain name”).
Complainant
also contends that Respondent is passively holding the disputed domain name and
that this is further evidence of bad faith registration and use under Policy ¶
4(a)(iii). See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715
(WIPO Sept. 6, 2000) (“Mere passive holding of a domain name can qualify as bad
faith if the domain name owner’s conduct creates the impression that the name
is for sale.”).
The
Panel may determine that Respondent’s practice of informing visitors that
Respondent is not affiliated with Complainant and its use of a link to
Complainant’s website are insufficient to preclude a finding of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000)
(“Respondent’s use of a disclaimer on its website is insufficient to avoid a
finding of bad faith. First, the
disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel
initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a
violation of Complainant’s rights.”); see also Thomas & Betts Int’l,
Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding
bad faith based upon initial interest confusion despite disclaimer and link to
the complainant’s website on the respondent’s website).
For
these reasons, (and in particular the overall conduct of the Respondents and
their failure to adequately explain their at times inconsistent actions), it is
found that the Complainant has successfully made out all three of the above
grounds. This is a clear-cut case and
one in which the Complainant is entitled to appropriate relief.
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 <americangirlclothes.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Clive Elliott
Panelist
Dated: September 9, 2005
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