Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin
Claim Number: FA1812001821246
Complainant is Retail Royalty Company and AE Direct Co LLC (“Complainant”), represented by Katelyn Seigel of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aarie.com>, registered with NameKing.com 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2018; the Forum received payment on December 14, 2018.
On December 19, 2018, NameKing.com Inc. confirmed by e-mail to the Forum that the <aarie.com> domain name is registered with NameKing.com Inc. and that Respondent is the current registrant of the name. NameKing.com Inc. has verified that Respondent is bound by the NameKing.com 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 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2019 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@aarie.com. Also on December 21, 2018, 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 January 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
A. Complainant
Complainant states that it designs, markets, and sells casual, current clothing, accessories, and intimate apparel under the AERIE mark. Complainant operates over 940 AMERICAN EAGLE OUTFITTERS retail stores around the world, where AMERICAN EAGLE OUTFITTERS and AERIE products are available, and currently ships products to 81 countries. Complainant has rights in the AERIE mark based upon its registration of the mark in the United States in 2008.
Complainant alleges that the disputed domain name is confusingly similar to its AERIE mark, as the domain name differs from Complainant’s mark only by replacing an “e” for an “a” and adding the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the AERIE mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to direct Internet users to a click-through linking portal with sponsored links to competing products. Furthermore, Respondent engages in typosquatting.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent, on the <advexplore.com> domain name, lists the domain name for sale for $5,759. Further, Respondent attempts to commercially benefit from the goodwill and reputation associated with Complainant’s AERIE marks by directing Internet users to a click-through website featuring links to competing products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark AERIE and uses it to market clothing products.
Complainant’s rights in its marks date back to at least 2008.
The disputed domain name was registered in 2012.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a website that offers advertising links to competing products. Respondent offered the disputed domain name for sale for a price in excess of out of pocket costs.
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 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 (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.”).
The dispute domain name is confusingly similar to Complainant’s mark as the domain name differs from Complainant’s mark only by replacing an “e” for an “a” and adding the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar). The Panel therefore finds that the <aarie.com> domain name is confusingly similar to Complainant’s AERIE mark under Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use its mark in any way. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Here, the WHOIS identifies the registrant as “DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation.” Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to direct Internet users to a click-through linking portal with sponsored links to products that compete with those of Complainant. Using a domain name to offer links to services in direct competition with a complainant generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Accordingly, the Panel finds that Respondent’s use of the domain name to offer related hyperlinks fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Further, Respondent engages in typosquatting: the disputed domain name replaces the letter “e” in the AERIE mark with the letter “a.” Registering a domain name containing common typing errors in a complainant’s mark can indicate a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). As such, the Panel finds that Respondent’s typosquatting provides additional evidence of Respondent’s alleged lack of rights and legitimate interests per Policy ¶ 4(a)(ii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent attempts to commercially benefit from the goodwill and reputation associated with Complainant’s AERIE marks by directing Internet users to a click-through website that offers links to competing products. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Accordingly, the Panel Finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Further, Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”); see also Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Moreover, by switching the letters “e” and “a” in Complainant’s mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). As such, the Panel finds bad faith typosquatting under 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 <aarie.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 13, 2019
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