Retail Royalty Company and AEO Management Co. v. DUANZUOCHUN
Claim Number: FA1202001428749
Complainant is Retail Royalty Company and AEO Management Co. (“Complainant”), represented by Juan Pablo Cadena of Brigard & Castro S.A., Colombia. Respondent is Duanzuochun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americaneagleoutfitters.co>, registered with .CO Gateway.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2012; the National Arbitration Forum received payment on February 8, 2012.
On February 10, 2012, .CO Gateway confirmed by e-mail to the National Arbitration Forum that the <americaneagleoutfitters.co> domain name is registered with .CO Gateway and that Respondent is the current registrant of the name. .CO Gateway has verified that Respondent is bound by the .CO Gateway 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 February 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2012 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@americaneagleoutfitters.co. Also on February 22, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 March 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration 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.”
There are two Complainants in this matter: Retail Royalty Company and AEO Management Co. Complainant asserts that Complainant, Retail Royalty Company, and Complainant, AEO Management Co., are related companies and wholly-owned subsidiaries of American Eagle Outfitters, Inc. Complainant alleges that Complainant AEO Management Co. is responsible for the operation of the retail stores and Complainant Retail Royalty Company holds title to the intellectual property of 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 Organizing Committee for the 2010 Olympic and Paralympic Games and International Olympic Committee v. Hardeep 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 Investments, 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 the trademarks contained within the disputed domain names. Likewise, in American Family Health Services 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. ForumNov. 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 is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them as a single entity in this proceeding. Throughout the Decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
1. Complainant, Retail Royalty Company, and Complainant, AEO Management Co., are related companies that are both wholly-owned subsidiaries of American Eagle Outfitters, Inc.
2. Complainant, AEO Management Co., is responsible for the operation of the retail stores, and Complainant, Retail Royalty Company, holds titles to the intellectual property of American Eagle Outfitters, Inc.
3. Complainant has rights in the AMERICAN EAGLE OUTFITTERS mark.
4. Complainant has registered the AMERICAN EAGLE OUTFITTERS mark (Reg. No. 2,086,693 registered August 12, 1997) through the United States Patent and Trademark Office (“USPTO”).
5. Complainant has registered the AMERICAN EAGLE OUTFITTERS mark (Reg. No. 1,240,996 registered August 31, 2006) with IP Australia (“IPA”).
6. Complainant uses its mark to design, market, and sell clothing through retail stores and the Internet.
7. Respondent registered the <americaneagleoutfitters.co> domain name on November 16, 2011.
8. The <americaneagleoutfitters.co> domain name is identical to Complainant’s mark.
9. Respondent is not commonly known by the disputed domain name.
10. The <americaneagleoutfitters.co> domain name resolves to a website which displays links to Complainant’s competitors in the retail clothing industry.
11. Respondent’s registration and use of the <americaneagleoutfitters.co> domain name is disruptive to Complainant.
12. Respondent intended, by registering and using the <americaneagleoutfitters.co> domain name, to divert Internet users from Complainant’s website to its own in order to commercially benefit from Internet users’ mistakes as to the source, sponsorship, or affiliation of the disputed domain name.
13. Respondent had constructive or actual knowledge of Complainant’s rights in the AMERICAN EAGLE OUTFITTERS mark prior to its registration of the <americaneagleoutfitters.co> domain name.
B. Respondent
Respondent did not submit a Response.
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.
(4) 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 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 contends that it has rights in the AMERICAN EAGLE OUTFITTERS mark. Complainant provides proof that it has registered the AMERICAN EAGLE OUTFITTERS mark with the USPTO (Reg. No 2,086,693 registered August 12, 1997). Complainant demonstrates that it has also registered the AMERICA EAGLE OUTFITTERS mark with IPA (Reg. No. 1,240,996 registered August 31, 2006). Panels have found that the registration of a trademark with a trademark authority, regardless of the location of the parties, is sufficient evidence of rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel therefore finds that Complainant has rights in the AMERICAN EAGLE OUTFITTERS mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <americaneagleoutfitters.co> domain name is identical to its mark. Complainant asserts that Respondent merely deleted the spaces between the words in Complainant’s mark and added the country-code top-level domain (“ccTLD”) “.co” to create the disputed domain name. The Panel finds that the deletion of spaces between words in a mark fails to distinguish the disputed domain name from Complainant’s mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The Panel also finds that the addition of a ccTLD is irrelevant to a determination of confusing similarity. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel finds that Respondent’s <americaneagleoutfitters.co> domain name is identical to Complainant’s AMERICAN EAGLE OUTFITTERS mark pursuant to 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 by the disputed domain name. The WHOIS record for the <americaneagleoutfitters.co> domain name lists “DUANZUOCHUN” as the domain name registrant. The Panel finds that this registrant name is not reflected in the disputed domain name. Furthermore, Complainant argues that Respondent does not have any trademarks for the <americaneagleoutfitters.co> domain name and has not been licensed or otherwise authorized to use Complainant’s mark in any way. The Panel finds that Respondent is not commonly known by the disputed 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s use of the disputed domain name is not protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant asserts that the <americaneagleoutfitters.co> domain name displays only links to Complainant’s competitors in the retail clothing industry. The panels in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), held that the offering of no goods or services other than the display of competitive links is not a use of a disputed domain name which gives a respondent rights or legitimate interests in the disputed domain name. The Panel finds that Respondent’s use of the <americaneagleoutfitters.co> domain name to display links to Complainant’s competitors is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant argues that Respondent registered and is using the <americaneagleoutfitters.co> domain name in bad faith. Complainant contends that Respondent’s registration and use of the disputed domain is meant to disrupt Complainant’s business. Complainant alleges that the <americaneagleoutfitters.co> domain name resolves to a website displaying links to Complainant’s competitors. Panels have previously held that the display of competing links on an identical or confusingly similar domain name is disruptive. 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that the <americaneagleoutfitters.co> domain name is disruptive pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered and is using the disputed domain name in order to take commercial advantage of Internet users’ mistakes as to the source or sponsorship of the <americaneagleoutfitters.co> domain name. Complainant asserts that the <americaneagleoutfitters.co> domain name is identical to Complainant’s mark and the resolving website’s content is a list of links to the websites of Complainant’s competitors. Complainant argues that Respondent intended to create confusion for Internet users as to whether the disputed domain name is affiliated with Complainant. The Panel infers that Respondent is compensated for the display of the links displayed on the <americaneagleoutfitters.co> domain name. The Panel finds that Respondent intended to cause confusion as to the source of the disputed domain name and then to take commercial advantage of Internet users’ mistakes about the affiliation of the <americaneagleoutfitters.co> domain name pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent had constructive and/or actual knowledge of Complainant’s rights in the AMERICAN EAGLE OUTFITTERS mark prior to Respondent’s registration of the <americaneagleoutfitters.co> domain name. Complainant argues that this is a result of its widespread renown, use, promotion, distribution, and advertisement of the AMERICAN EAGLE OUTFITTERS brand and mark. Panels have previously determined that constructive knowledge is not enough for a finding of bad faith but actual knowledge is strong evidence of bad faith. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the AMERICAN EAGLE OUTFITTERS mark prior to the registration and subsequent use of the <americaneagleoutfitters.co> domain name, and finds that Respondent registered and is using the <americaneagleoutfitters.co> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <americaneagleoutfitters.co> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 26, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page