Retail Royalty Company, and AE Direct Co LLC v. Patrick Hipskind
Claim Number: FA1406001565523
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 Patrick Hipskind (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeo.xyz>, registered with Uniregistrar Corp.
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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2014; the National Arbitration Forum received payment on June 19, 2014.
On June 20, 2014, Uniregistrar Corp confirmed by e-mail to the National Arbitration Forum that the <aeo.xyz> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 June 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@aeo.xyz. Also on June 25, 2014, 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.
A timely Response was received and determined to be complete on June 25, 2014.
Complainant submitted an Additional Submission that was received and determined to be timely on June 30, 2014.
A timely response was received from the Respondent to the Additional Submission of the Complainant on June 30, 2014.
On July 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <aeo.xyz> domain name is identical to Complainant’s AEO mark. In support of this Complainant asserts that:
· it designs, markets and sells casual, current clothing, accessories, basics, and footwear targeting 15 to 25 year olds under the marks American Eagle Outfitters, AE, and AEO at its own American Eagle Outfitters retail stores and on its website <ae.com>;
· it has rights in the AEO mark based on its fame and recognition, as well as its registrations with the United States Patent and Trademark Office (“USPTO”) as well as with trademark offices in over 100 countries around the world in support of which Complainant referred to Exhibit F and G; and,
· Respondent’s <aeo.xyz> domain name is identical to Complainant’s AEO mark in that Respondent’s disputed domain name incorporates Complainant’s mark in its entirety.
2. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this Complainant asserts that
· Respondent has no trademark or other intellectual property rights in the disputed domain name;
· Respondent is also not commonly known by the disputed domain name as evidenced by the WHOIS information for Respondent’s <aeo.xyz> domain name;
· Complainant has not licensed or authorized Respondent to use any of the AEO marks.
3. Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that
· Respondent’s use of the disputed domain name disrupts its business;
· Respondent registered the disputed domain name with the intent to attract and confuse Internet users seeking its business on the Internet, and thus commercially profit from that confusion.
B. Respondent
Respondent's arguments can be summarized as follows.
1. Respondent’s <aeo.xyz> domain name is not identical or confusingly similar to Complainant’s mark. Respondent claims it was unaware of Complainant’s rights in the AEO mark or its registrations outside the United States.
2. Respondent has rights and legitimate interests in the disputed domain name, since
· Respondent registered the <aeo.xyz> domain name with the intent of developing it into an educational website. Respondent claims that “AEO” are vowels that fit well with the new “.xyz” extension, representing generations X, Y, and Z, for use as an educational website.
· Respondent temporarily parked the domain name with <sedo.com> until the layout for the disputed domain name was complete. Respondent thus has no control over any of the advertisements on the parked website.
3. Respondent did not register the <aeo.xyz> domain name in bad faith, since
· upon first notification of Complainant’s complaint, Respondent removed the parked page and built an educational website to which the disputed domain name now resolves.
· Respondent registered the disputed domain name because of the educational value the <aeo.xyz> domain name has. Respondent uses “AEO” because they are common vowels in the English language.
· Complainant showed no evidence that any of the links on the resolving website resolved to Complainant’s competitors. Respondent claims that the links displayed on the resolving website are links to Complainant’s own advertising.
· Respondent contends that Complainant is attempting to reverse domain name hijack the disputed domain name.
C. Additional Submissions
Complainant’s Additional Submission
Respondent’s Additional Submission
a. Internet users are sophisticated enough to understand that the <aeo.xyz> domain name is not necessarily associated with Complainant.
b. Respondent is making a fair use of this domain name pursuant to United States law. Respondent is not using the domain name as a trademark, is using it to identify the characteristics of its goods, and is acting in good faith.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two 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 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 AE Direct Co LLC. Complainants states that Retail Royalty Company, and AE Direct Co LLC are related companies, and are known together as “American Eagle Outfitters”.
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.”
The Panel finds that the Complainants have submitted sufficient evidence (in particular Exhibit C) to establish a sufficient link between the Complainants, therefore the Panel will treat them as a single entity and will refer to them collectively as “Complainant”.
Complainant is the owner of numerous trademarks around the world protecting the AEO Mark.
Complainant registered the <aeo.com> domain name on October 12, 1995.
Complainant registered the <ae.com> domain name on March 17, 1999.
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.
The Panel determined that Complainant submitted sufficient evidence (Complainant’s Exhibit F and G) that it has rights in the AEO mark based its registrations with the USPTO (e.g., Reg. No. 1,877,686 registered February 7, 1995) and in addition with over 100 countries around the world, some of which including, the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 535,229 registered October 20, 2000) and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 006,757,835 registered March 13, 2009).
Previous panels have determined that a complainant’s registration with a trademark agency is sufficient to establish the complainant’s rights in the registered trademark regardless of whether the respondent resides in the jurisdiction of the registration agency. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote that, “[the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”.
Consistent with the cited precedent, the Panel finds that Complainant’s USPTO, CIPO and OHIM registrations establish Complainant’s rights in the AEO mark pursuant to Policy ¶ 4(a)(i). See Dixie Consumer Prods. LLC v. Private Whois dixiecup.com, FA 1419529 (Nat. Arb. Forum Jan. 27, 2012) (finding that complainant’s trademark registrations with a number of trademark authorities around the world, including with the CIPO and USPTO, “successfully proves a complainant has rights in a mark . . .”); see also Petroleo Brasileiro S.A. – Petrobras v. Munoz, FA 1222428 (Nat. Arb. Forum Oct. 16, 2008) (finding complainant’s multiple trademark registrations around the world, including those with the European Union’s Office for Harmonization in the Internal Market (“OHIM”), established complainant’s rights in its mark under Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <aeo.xyz> domain name is identical to Complainant’s AEO mark in that Respondent’s disputed domain name incorporates Complainant’s mark in its entirety.
Respondent contends that its <aeo.xyz> domain name is not identical or confusingly similar to Complainant’s mark. Respondent claims it was unaware of Complainant’s rights in the AEO mark or its registrations outside the United States. Respondent alleges that it uses the gTLD “.xyz” to represent generations “X, Y, and Z” in relation to its educational website.
The Panel notes that Respondent’s arguments regarding its awareness, or lack thereof, of Complainant’s marks will be discussed under Policy ¶ 4(a)(iii).
Additionally the Panel shares the traditional panel viewpoint that gTLDs are not included in the Policy ¶ 4(a)(i) analysis regarding whether a disputed domain name is confusingly similar or identical to a registered mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Based on the above the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s trademarks under Policy ¶ 4(a)(i).
As to the second 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).
Complainant contends that Respondent has no trademark or other intellectual property rights in the disputed domain name, and is not commonly known by the disputed domain name as evidenced by the WHOIS information. The Panel notes the WHOIS information for the disputed domain name lists “Patrick Hipskind” as registrant.
Complainant next contends that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant submitted evidence (Complainant’s Exhibit I) which shows that Respondent is using the disputed domain name to redirect visitors and on the resolving website links to various competitors of Complainant’s are displayed.
The Panel finds that Respondent did not submit sufficient evidence supporting that Respondent is commonly known by the disputed domain name. Therefore Panel finds that Respondent has no rights or legitimate interests in the <aeo.xyz> domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Furthermore the Panel finds that Respondent is not using the <aeo.xyz> domain name domain name to provide 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) by causing the disputed domain name to resolve to a webpage promoting Complainant’s own website, as well as websites belonging to competitors. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 asserts that Respondent’s use of the disputed domain name disrupts Complainant’s business by providing competing hyperlinks on the resolving website.
Furthermore, Complainant points out in the Additional Submissions that Respondent has already admitted to knowing of Complainant’s use of the AEO mark in the United States prior to registering this domain name.
Panel notes that prior panels have routinely found that using a disputed domain name to resolve to a website displaying links that compete with a complainant indicates bad faith competition and disruption of a complainant’s business under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
The Panel concludes, based on the contention of the Respondent, that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Based on the above the Panel concludes that Respondent’s use of the <aeo.xyz> domain name to resolve to a website featuring links displaying Complainant’s mark and links that compete with Complainant indicates a bad faith intent to disrupt Complainant’s business under Policy ¶ 4(b)(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 <aeo.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: July 17, 2014.
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