Retail Royalty Company, and AE Direct Co. LLC v. DHARSHINEE NAIDU
Claim Number: FA1312001534383
Complainant is Retail Royalty Company, and AE Direct Co. LLC (“Complainant”), represented by Rebecca B. Gibbs of American Eagle Outfitters, Inc., Pennsylvania, USA. Respondent is DHARSHINEE NAIDU (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iranianamericaneagle.com>, registered with ENOM, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2013; the National Arbitration Forum received payment on December 12, 2013.
On December 13, 2013, ENOM, INC confirmed by e-mail to the National Arbitration Forum that the <iranianamericaneagle.com> domain name is registered with ENOM, INC and that Respondent is the current registrant of the name. ENOM, INC has verified that Respondent is bound by the ENOM, INC 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 December 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@iranianamericaneagle.com. Also on December 13, 2013, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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" 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 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.
Complainant contends the following:
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Retail Royalty Company, and AE Direct Co. LLC. The Complaint argues that these are “related companies,” collectively known as “American Eagle Outfitters, Inc.”
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 (Nat. Arb. 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 Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint establishes a sufficient nexus or link between the Complainants and treats them as a single entity in this proceeding. In this decision the Complainants will be collectively referred to as “Complainant.”
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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 set forth in the Complaint as true unless the evidence is clearly contradictory. See 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); 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.”).
Complainant states that it uses the AMERICAN EAGLE mark in connection with its design, marketing, and sale of casual, current clothing, accessories, basics and footwear targeting 15 to 25 year olds. Complainant asserts that it owns rights in the mark under Policy ¶ 4(a)(i) from its registrations of the mark with numerous national trademark offices, including the USPTO (e.g., Reg. No. 3,545,443 registered December 9, 2008), the MIIP(e.g., Reg. No. 1,007,285 registered July 31, 2006), and the CIPO (e.g., Reg. No. TMA785,044 registered January 27 2010). The Panel notes that previous panels have held that a complainant establishes its rights in a mark by evidence of its numerous registrations for the mark around the world. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has adequately demonstrated its rights in the AMERICAN EAGLE mark under Policy ¶ 4(a)(i).
Complainant next argues that the <iranianamericaneagle.com> domain name is confusingly similar to Complainant’s AMERICAN EAGLE mark because it incorporates Complainant’s mark and simply adds the word “Iranian.” The Panel also notes that the disputed domain name eliminates the space found between words in the AMERICAN EAGLE mark and also affixes the generic top-level domain (“gTLD”) “.com.” The Panel notes that other panels typically conclude that a domain name’s elimination of a space and affixation of a gTLD do not distinguish the domain name from a complainant’s mark. See, e.g., Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel also notes that it has previously been held that a domain name is confusingly similar to a complainant’s mark where the domain name fully appropriates the mark and merely adds a generic word or a geographic descriptor. 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 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). Here, the Panel finds that the disputed domain name’s added term “Iranian” is either a generic term or a geographic indicator, and thus fails to distinguish the <iranianamericaneagle.com> domain name from Complainant’s AMERICAN EAGLE mark. Therefore, the Panel holds that the disputed domain name is confusingly similar to Complainant’s mark under under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant argues that Respondent is not commonly known as the <iranianamericaneagle.com> domain name under Policy ¶ 4(c)(ii), because there is no evidence in the record, including the WHOIS information, that Respondent is commonly known by any derivative of Complainant’s AMERICAN EAGLE mark. Complainant further points out that it has not licensed or authorized Respondent to use the AMERICAN EAGLE mark in a domain name. It has previously been held that a respondent is not commonly known by a disputed domain name where the complainant asserts that it has not authorized the respondent to use its mark and where nothing in the record, including the WHOIS information, suggests that respondent is commonly known by the disputed domain name. See, e.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Here, the Panel notes that the WHOIS information identifies “DHARSHINEE NAIDU” as the registrant of the disputed domain name, which does not support a finding that Respondent is commonly known as <iranianamericaneagle.com>. The Panel finds that nothing else in the record suggests that Respondent is commonly known as <iranianamericaneagle.com>, and therefore holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next suggests that Respondent is not using the disputed domain name for 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), because the domain name resolves to a click-through website that promotes links to Complainant’s competitors. The Panel notes that Complainant has submitted a screenshot of the website resolving from <iranianamericaneagle.com>, which displays a generic photo of a young woman as well as links entitled “Hollister Clothing,” “Hollister Jeans,” “Womens Trendy Shoes,” “Calvin Klein,” and “American Eagle Application,” among others. The Panel concludes from this screenshot that the disputed domain name’s resolving website displays links to Complainant’s competitors in the young adult fashion industry. The Panel also notes that although the website resolving from the disputed domain name appears to promote one AMERICAN EAGLE-related link, Complainant alleges that this link in fact resolves to another click-through website promoting additional links to Complainant’s competitors. To support this contention, Complainant has submitted a series of additional screenshots which appear to capture the websites resolving from some of the click-through links listed above. The Panel concludes from these screenshots that the links promoted on the at-issue website redirect Internet users to additional click-through websites which promote additional links to Complainant’s competitors such as “Aeropastle” and “Ralph Lauren.” The Panel notes that it has previously been held that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the domain name is used to promote hyperlinks to commercial websites that compete with the complainant. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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)). For the foregoing reasons, the Panel holds that Respondent is not using the disputed domain name for 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).
Complainant has proven this element.
Complainant suggests that Respondent has demonstrated bad faith registration and use of the <iranianamericaneagle.com> domain name under Policy ¶ 4(b)(iii), because the disputed domain name frustrates and disrupts Complainant’s business by diverting potential customers to Complainant’s competitors. Complainant has submitted evidence that the website resolving from the disputed domain name is a pay-per-click site promoting links to Complainant’s competitors in the young adult fashion industry, or links to other pay-per-click sites promoting links to Complainant’s competitors. It has previously been held that a respondent demonstrates bad faith under Policy ¶ 4(b)(iii) where the domain name resolves to a generic website promoting commercial links to the complainant’s competitors. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel holds that the <iranianmericaneagle.com> domain name disrupts Complainant’s business, and that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv), because the <iranianamericaneagle.com> domain name is confusing to customers seeking out Complainant’s AMERICAN EAGLE goods on the Internet and Respondent is profiting from its use of the disputed domain name in the form of click-through fees. The Panel notes that it has previously been determined that a respondent demonstrates bad faith attraction for commercial gain under Policy ¶ 4(b)(iv) where there is an obvious connection between the disputed domain name and the complainant’s well-known mark and the respondent is exploiting that connection for profit. 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). Previous panels have presumed that a respondent is profiting commercially where the disputed domain name is used to promote links to the complainant’s competitors. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel concludes there is an obvious connection between the disputed domain name and Complainant’s AMERICAN EAGLE mark since the disputed domain name incorporates the mark in its entirety and merely adds the word “Iranian.” The Panel finds that this is likely to cause Internet users confusion as to the source or sponsorship of the at-issue website. Further, as discussed previously, there is evidence that the <iranianamericaneagle.com> domain name promotes links to Complainant’s competitors in the young adult fashion industry. The Panel finds that Respondent is commercially profiting from the disputed domain name in the form of click-through fees. For the foregoing reasons the Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent has demonstrated bad faith under Policy ¶ 4(a)(iii), because given the AMERICAN EAGLE mark’s widespread renown, use, and promotion, Respondent’s knowledge of Complainant’s rights in the mark can be inferred. The Panel notes that it has previously been determined that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering a disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Previous panels have inferred that a respondent had actual notice of the complainant’s rights where the appropriated trademark is extremely well-known. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). Here, Complainant has submitted a variety of evidence to support its contention that the AMERICAN EAGLE mark is well-known, including Complainant’s 2012 Annual Report, various advertisements using the AMERICAN EAGLE mark, as well as a screenshot of Complainant’s official website. The Panel concludes that Complainant’s AMERICAN EAGLE mark is sufficiently well-known to support the contention that Respondent registered the <iranianamericaneagle.com> domain name with actual notice of Complainant’s rights in the AMERICAN EAGLE mark. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <iranianamericaneagle.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 21, 2014
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