American Eagle Outfitters, Inc. and Retail Royalty Company v. Matthew Whelan
Claim Number: FA2110001969760
Complainant is American Eagle Outfitters, Inc. and Retail Royalty Company (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Matthew Whelan (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeo-inc.careers>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2021; the Forum received payment on October 19, 2021.
On October 20, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <aeo-inc.careers> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 October 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2021 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@aeo-inc.careers. Also on October 21, 2021, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 nominal Complainants. 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.”
The two named Complainants in this matter are American Eagle Outfitters Inc. and Retail Royalty Company. American Eagle Outfitters Inc. is the parent company of Retail Royalty and thus they are affiliated entities. Both nominal complainants have interests in the at-issue trademark and the at-issue confusingly similar domain name. Further, Respondent has not objected to treating the complainants as a single entity with regard to the instant proceeding. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
A. Complainant
Complainant contends as follows:
Complainant, American Eagle Outfitters Inc. and Retail Royalty Company, offers high quality, on-trend clothing, footwear, accessories, and personal care products.
Complainant has rights in the AEO mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <aeo-inc.careers> domain name is confusingly similar to Complainant’s AEO mark since it contains the entire mark, merely adding the term “inc” and the “.careers” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <aeo-inc.careers> domain name because Respondent is not commonly known by the at-issue domain name and is not authorized to use Complainant’s AEO mark. Additionally, Respondent fails to use the at-issue domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to display pay-per-click links. Further, Respondent uses the at-issue domain name to fraudulently impersonate Complainant through email.
Respondent registered and uses the <aeo-inc.careers> domain name in bad faith. Respondent disrupts Complainant’s business by fraudulently impersonating Complainant through email. Respondent also attracts internet traffic to a pay-per-click webpage. Further, Respondent has actual knowledge of Complainant’s rights in the AEO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AEO mark.
Complainant’s rights in AEO existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademarks.
Respondent uses the <aeo-inc.careers> domain name to promote pay-per-click links, and bogus malware warnings.
Respondent uses the at-issue domain name to display pay-per-click links and to fraudulently impersonate Complainant through email.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for its AEO mark demonstrates Complainant’s rights in such mark for the purposes of 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).”).
The at-issue domain name consists of Complainant’s AEO trademark followed by a hyphen, the generic term “inc” and the top level domain name “.careers”. The differences between the at-issue <aeo-inc.careers> domain name and Complainant’s AEO trademark is insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <aeo-inc.careers> domain name is confusingly similar or identical to Complainant’s AEO trademark. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
The Panel notes that in Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 the panel found that “[a] TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLD.” Numerous other decisions have similarly held that syntactic necessity renders a domain name’s generic top-level component, or the removal of domain name impermissible characters from a trademark, to be extraneous when considering confusing similarity under the Policy. However, within the last decade hundreds of lesser-known gTLDs ‑e.g. ‘.top’, ‘.xyz’, and ‘.loans’‑ have become available for general use. Here, the more recently permissible gTLD, “careers” is suggestive of Complainant’s business and thus only adds to the confusion between Complainant’s trademark and Respondent’s domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Mathew Whelan” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <aeo-inc.careers> domain name or by AEO. The Panel therefore concludes that Respondent is not commonly known by the <aeo-inc.careers> domain name for the purposes of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Respondent uses the at-issue domain name to address a webpage that displays pay-per-click links. Using the at-issue domain name in this manner does not indicate a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Likewise, Respondent’s use of the <aeo-inc.careers> domain name to host and send email that impersonates Complainant does not indicate a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Respondent’s uses <aeo-inc.careers> hosted email to facilitate an employment scam wherein email from <aeo-inc.careers> to third parties pretends to be from a “ Human Resources Recruiter” at AEO who then provides the recipient with a bogus job application in furtherance of fraud. See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the at-issue domain name to host and send email designed to deceive its recipient into believing he or she is dealing with Complainant. Such use of the domain name is disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also Progress Rail v. Woods, (Forum FA1906001849692) (“Using a disputed domain name to pass off as an employee of a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). … The Panel finds that Respondent registered and uses the disputed domain name in bad Faith under Policy ¶¶ 4(b) (iii) and (iv).”).
Next, Respondent’s use of <aeo-inc.careers> to feature pay-per-click links likewise suggests bad faith attraction for commercial gain per Policy ¶ 4(b)(iv). Undeniably, Respondent uses the domain name to attract internet users to its pay-per-click links so it can thereby capitalize on the confusion it intentionally created between <aeo-inc.careers> and Complainant‘s AEO mark. See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Finally, Respondent had actual knowledge of Complainant’s rights in the AEO mark when it registered <aeo-inc.careers> as a domain name. Respondent’s actual knowledge is evident from the notoriety of the AEO trademark; from Respondent’s incorporation of Complainant’s AEO trademark into the at-issue domain name along with the suggestive terms “inc” and “careers”; and from Respondent’s use of <aeo-inc.careers> to impersonate Complainant in furtherance of the email based scheme discussed elsewhere herein. Respondent’s registration and use of the <aeo-inc.careers> domain name with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeo-inc.careers> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 17, 2021
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