American Eagle Outfitters, Inc. and Retail Royalty Company v. ahmed eldomany / arabyads
Claim Number: FA2205001996765
Complainants are American Eagle Outfitters, Inc. and Retail Royalty Company (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is ahmed eldomany / arabyads (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <americaneaglecoupons.shop>, <americaneaglecoupon.shop>, <americaneaglecoupon.site>, <americaneaglecoupon.online>, and <americaneaglecoupon.store> 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.
James Bridgeman SC as Panelist.
Complainants submitted a Complaint to the Forum electronically on May 17, 2022; the Forum received payment on May 17, 2022.
On May 18, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <americaneaglecoupons.shop>, <americaneaglecoupon.shop>, <americaneaglecoupon.site>, <americaneaglecoupon.online>, and <americaneaglecoupon.store> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 May 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2022 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@americaneaglecoupons.shop, postmaster@americaneaglecoupon.shop, postmaster@americaneaglecoupon.site, postmaster@americaneaglecoupon.online, postmaster@americaneaglecoupon.store.
Also on May 19, 2022, 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 June 15, 2022, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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.
Complainants request that the disputed domain names be transferred from Respondent to the first named Complainant.
A. Complainant
Complainants submit that the first named Complainant, American Eagle Outfitters Inc., is the parent corporation of the second named Complainant Retail Royalty Company and that they have joint standing as Complainants as affiliated companies, each having an interest in the subject matter of the Complaint. See AE and Retail Royalty v. Whelan (Forum FA2110001969760) (“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.”). It should be noted that this Panel accepts this submission and proceeds to make this determination on that basis.
Complainants allege that the disputed domain names <americaneaglecoupons.shop>, <americaneaglecoupon.shop>, <americaneaglecoupon.site>, <americaneaglecoupon.online>, and <americaneaglecoupon.store> are each confusingly similar to Complainants’ AMERICAN EAGLE mark because they contain Complainants’ mark in its entirety, combined with a generic and/or descriptive term “coupon” in singular or plural form and argue that panels established under the Policy have consistently held that the addition of generic or descriptive terms does not distinguish a domain name from the mark at issue.
Moreover, Complainants submit that the element “coupon” in its singular or plural heightens the confusing similarity of the disputed domain names because such term relates to Complainant’s business, as Complainant is the only entity that can authorize coupons for its own AMERICAN EAGLE stores.
Complainants add that the gTLD extensions are irrelevant to confusing similarity analysis.
Further, when viewed as descriptive terms, the gTLDs “.shop,” “.site,” “.online,” and “.store” likewise heighten the confusing similarity of the disputed domain names because such terms obviously relate to Complainant’s business.
Complainants next allege that Respondent has no rights or legitimate interest in the disputed domain names because nothing in the cord demonstrates that Respondent is or was commonly known by the disputed domain names prior to their registration.
Moreover, Complainants assert that they have not authorized Respondent to use its AMERICAN EAGLE marks. See Retail Royalty and AEO v. Tran Ngoc Phuong (Forum FA1207001455612) (“Complainant contends that the WHOIS information, which lists ‘Tran Ngoc Phuong’ as the registrant, indicates that Respondent is not commonly known by the disputed domain name. Complainant claims that Respondent is not affiliated with, licensed by, or in privity with Complainant. In light of the evidence in the record, the Panel finds that Respondent is not commonly known by the <americaneaglecouponsx.com> domain name according to Policy ¶ 4(c)(ii).”).
Referring to screen captures of websites to which the disputed domain names resolve, Complainants argue that they show that Respondent is using the disputed domain names to resolve to fraudulent websites offering fake coupons and argue that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, Retail Royalty and AEO v. Private Whois aecoupons.net (Forum FA1203001433844) (finding respondent’s use of the <aecoupons.net> for a website offering fake coupons for Complainant’s products that linked to software downloads does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainants further contend that Respondent’s use of the disputed domain names for passing off and competing activities further demonstrates its lack of legitimate interest. Specifically, Respondent’s use of four of the disputed domain name for websites that display Complainant’s AMERICAN EAGLE mark and Complainant’s copyright-protected and trademark-protected AE Eagle Design constitutes passing off because such uses give the false and highly misleading appearance that Complainant owns or is otherwise affiliated with Respondent’s websites.
Complainants add that the screen captures of the websites to which the disputed domain names resolve, show that Respondent is using of one of the disputed domain names to advertise a third-party apparel website constitutes a competing use, and argues that both passing off and competing activities have been consistently held to demonstrate a lack of legitimate interest under the Policy. See Retail Royalty and AEO v. Tran Ngoc Phuong (Forum FA1207001455612) (holding respondent’s use of the domain name <americaneaglecouponsx.com> for a website with content related to Complainant including images from Complainant’s website constitutes passing off and neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainants next allege that each of the disputed domain names was registered and is being used in bad faith arguing that it is indisputable that Respondent registered the disputed domain names in bad faith with knowledge of Complainants’ AMERICAN EAGLE marks, given the fame of Complainants’ marks and the fact that Respondent’s websites explicitly refer to Complainant’s AMERICAN EAGLE marks. See, Retail Royalty and AEO v. Killi (Forum FA1302001486068) (“. . . due to the fame of Complainant’s [AMERICAN EAGLE] mark, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel holds that Respondent registered the disputed domain name [<americaneaglecoupons2013.com>] bad faith under Policy ¶ 4(a)(iii).”).
Complainants further contend that bad faith registration and use of the disputed domain names are proven because the evidence shows that Respondent is unfairly disrupting Complainant’s business by (1) using the disputed domain names for fraudulent websites and to advertise a directly competing apparel website, (2) competing with Complainant for Internet traffic, and (3) interfering with Complainant’s ability to control the use of its federally registered AMERICAN EAGLE mark and Respondent’s activities in opposition to Complainant are sufficient to define Respondent as a competitor under the Policy.
Complainants add that Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainants and their AMERICAN EAGLE mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s websites.
Regardless of how Respondent attempts to profit from its fraudulent websites and its advertising of a competing apparel website, Respondent’s registration and use of the confusingly similar disputed domain names to trade on Complainants’ goodwill and to attract Internet users benefits Respondent to the detriment of Complainant, and therefore constitutes bad faith. See, Retail Royalty and AEO v. Tran Ngoc Phuong (Forum FA1207001455612) (“Complainant explains that Respondent’s use of Complainant’s images, Complainant’s mark, content relating to Complainant, and Complainant’s coupons creates the impression that Complainant is associated with the <americaneaglecouponsx.com> domain name. The Panel determines that Respondent is attempting to commercially benefit by creating Internet user confusion and the Panel holds that Respondent registered and uses the <americaneaglecouponsx.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).”).
Additionally Complainants argue that Respondent’s passing off activities constitute further evidence of Respondent’s bad faith under Policy ¶¶ 4(b)(iv) and 4(b)(iii) as well as an independent ground of bad faith under prior decisions made by panels established under the Policy. See,Bridgestone Brands v. TornadoU (Forum FA1101001367353) (“. . . Complainant argues that Respondent’s resolving website prominently displays Complainant’s FIRESTONE mark and logos and purports to offer information about Complainant’s credit card services. The Panel finds that Respondent’s attempt to pass itself off as Complainant is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainants submit that they have fulfilled the criteria set in Policy and request that the disputed domain names be transferred to the first named Complainant American Eagle Outfitters, Inc.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The first and second named Complainants are a parent and subsidiary corporation, respectively, that carry on business as specialty retailers that design, market, and sell apparel and other products using inter alia the AMERRICAN EAGLE trademark for which the second named Respondent owns a portfolio of trademark and service mark registrations in the United States including the following registrations for the AMERICAN EAGLE word mark:
· United States trademark AMERICAN EAGLE, registration number 1943730, registered on December 26, 1995 for goods in international class 3;
· United States trademark AMERICAL EAGLE, registration number 3033841, registered on December 27, 2005 for goods in international class 25;
· United States trademark and service mark AMERICAN EAGLE, registration number 5711099, registered on March 26, 2019 for goods and services in international classes 9, 16 and 36;
The second named Complainant is additionally the owner of registered trademark, service mark, and copyright registrations for their EAGLE device.
Complainants have an established Internet presence and advertise and sell merchandise through on their website located at the domain name <www.ae.com> which is accessible by their domain names <aeo.com >and <americaneagleoutfitters.com>. Complainants’ domain names were registered in 1999, 2011, and 2002, respectively.
All of the disputed domain names were registered on the same date, December 16, 2021, and resolve to websites in the Arabic language for which Complainants have provided screen captures with translations into the English language in an annex to the Complaint.
The disputed domain name <americaneaglecoupon.shop> resolves to a third party website that purports to offer children’s and women’s apparel at a discount.
The other disputed domain names <americaneaglecoupons.shop>, <americaneaglecoupon.site>, <americaneaglecoupon.online>, and <americaneaglecoupon.store> resolve to websites that provide a link to a third party website with an address on the Saudi Arabian country code Top-Level Domain <.com.sa>.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
Respondent has availed of a privacy service to conceal its name on the published WhoIs and he was identified as the registrant of the disputed domain names by the Registrar in the course of this proceeding.
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”).
Complainants have provided convincing, uncontested evidence that they have rights in the AMERICAN EAGLE mark, established by their extensive use of the mark and the United States trademark registrations described above owned by the second named Respondent.
The disputed domain names <americaneaglecoupons.shop>, <americaneaglecoupon.shop>, <americaneaglecoupon.site>, <americaneaglecoupon.online>, and <americaneaglecoupon.store> are each composed of Complainants’ AMERICAN EAGLE mark in its entirety, in combination with a generic and/or descriptive term “coupon” in singular or plural form and the generic Top Level Domain “(gTLD”) extensions <.shop>, <site>, <.online> and <.store>.
Complainants’ AMERICAN EAGLE mark is the dominant and only distinctive element in each of the disputed domain names. The element “coupon” in its singular or plural form is a descriptive term that infers a payment method for goods or services and in the context of the disputed domain names does not preclude a finding that the disputed domain names are each confusingly similar to Complainant’s AMERICAN EAGLE mark.
Neither do the gTLD extensions <.shop>, <site>, <.online> and <.store> add any distinguishing character because in the context of this Complainant they would on the balance of probabilities be considered by Internet users as a necessary technical requirement for the relevant disputed domain name.
This Panel finds therefore that each of the disputed domain names is confusingly similar to the AMERICAN EAGLE mark in which Complainants have rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· nothing in the record demonstrates that Respondent is or was commonly known by the disputed domain names prior to their registration;
· Complainant has not authorized Respondent to use its AMERICAN EAGLE marks.
· screen captures of websites to which the disputed domain names resolve, Complainants argue that Respondent’s registration and use the disputed domain names for fraudulent website show that Complainant is offering fake coupons which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use;
· the screen captures further show that Respondent is using the disputed domain names for passing off and competing activities further demonstrates its lack of legitimate interest;
· specifically, Respondent’s use of four of the disputed domain name for websites that display Complainant’s AMERICAN EAGLE mark and Complainant’s copyright-protected and trademark-protected AE Eagle Design constitutes passing off because such uses give the false and highly misleading appearance that Complainant owns or is otherwise affiliated with Respondent’s websites;
· the screen captures also show that Respondent is using of one of the disputed domain names to advertise a third-party apparel website constitutes a competing use, and both passing off and competing activities have been consistently held to demonstrate a lack of legitimate interest under the Policy.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given the substantial goodwill that Complainants have acquired in the AMERICAN EAGLE mark, the fact that each of the disputed domain names contain a reference to coupons, which refers to a method of payment typically in retail, that Respondent has no rights or legitimate interests in the disputed domain names and has failed to respond to this Complaint, on the balance of probabilities this Panel finds that each of the disputed domain names, each of which contains Complainants’ mark as its dominant and only distinctive feature, was chosen and registered in bad faith, with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the AMERICAN EAGLE mark and take predatory advantage of Complainants’ reputation.
Additionally, the content of the websites to which each of the disputed domain names resolve as shown in the English language translations provided in the screen captures annexed to the Complaint, appears to be intentionally designed to attract, mislead, confuse and misdirect attract Internet users to Respondent’s website by creating the false impression that there is a connection between Complainants and Respondent’s website.
Such intentional use of the disputed domain names in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This finding is supported by the fact that Responded availed of a privacy service to conceal his identity on the published WhoIs, has not responded to the Complaint, and has not contested Complainants’ allegations.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americaneaglecoupons.shop>, <americaneaglecoupon.shop>, <americaneaglecoupon.site>, <americaneaglecoupon.online>, and <americaneaglecoupon.store> domain names be TRANSFERRED from Respondent to the first named Complainant: American Eagle Outfitters, Inc.
James Bridgeman SC
Panelist
Dated: June 20, 2022
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