American Eagle Outfitters, Inc. and
Retail Royalty Company v. Admin c/o LaPorte Holdings
Claim
Number: FA0505000473826
Complainant is American Eagle Outfitters, Inc. and Retail Royalty Company (collectively “Complainant”), represented
by Kathryn E. Smith, of Wood, Herron & Evans, LLP, 2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is Admin c/o LaPorte Holdings (“Respondent”), 5482
Wilshire Blvd., #1928, Los Angeles, CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americaneaglestores.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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 10, 2005.
On
May 9, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <americaneaglestores.com> 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-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
May 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 1, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@americaneaglestores.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 9, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <americaneaglestores.com>
domain name is confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS
mark.
2. Respondent does not have any rights or
legitimate interests in the <americaneaglestores.com> domain name.
3. Respondent registered and used the <americaneaglestores.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Retail
Royalty Company, is a wholly owned subsidiary of American Eagle Outfitters, Inc.
Complainant
holds a number of trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the AMERICAN EAGLE OUTFITTERS mark (e.g., Reg.
No. 1,597,199 issued on May 22, 1990), related to many products, including
clothing.
Respondent
registered the <americaneaglestores.com> domain name on November
18, 2003. Respondent is using the disputed domain name to redirect Internet
users to a website that provides links to third-party websites featuring
clothing items in direct competition with Complainant’s business.
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.
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.
Complainant
established in this proceeding that it has rights in the AMERICAN EAGLE
OUTFITTERS mark through registration with the United States Patent and
Trademark Office and by continuous use of the mark in commerce. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting
this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks
hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”).
The domain name
registered by Respondent, <americaneaglestores.com>, is
confusingly similar to Complainant’s mark because the disputed domain name
incorporates the dominant features of Complainant’s mark and adds the word
“stores.” The addition of the word
“stores” to the dominant features of Complainant’s mark does not sufficiently differentiate
the domain name from the mark pursuant to Policy ¶ 4(a)(i) because the domain
name and mark continue to share the dominant feature “American Eagle” and the
word “stores” simply describes Complainant’s business. See Hammond Suddards Edge v. Westwood Guardian
Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name,
“hammondsuddards.net,” is essentially identical to the complainant's mark,
Hammond Suddards Edge, where the name “Hammond Suddards” identifies the
complainant independently of the word “Edge”); see also WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to the complainant’s mark, where the
complainant holds the WEST JET AIR CENTER mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
is confusingly similar to the complainant’s HOYLE mark, and that the addition
of “casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity).
Additionally,
Respondent’s <americaneaglestores.com> domain name is confusingly
similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark because the domain name
incorporates the dominant feature of Complainant’s mark and adds the generic
top-level domain “.com.” The addition
of a generic top-level domain does not negate the confusingly similar aspects
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> is identical to the complainant's
registered trademark GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> is plainly identical to the
complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <americaneaglestores.com>
domain name that contains the dominant features of Complainant’s AMERICAN EAGLE
OUTFITTERS mark. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, it is assumed that Respondent does not have rights
or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where the complainant has asserted that the
respondent does not have rights or legitimate interests with respect to the
domain name it is incumbent on the respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights or legitimate
interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by the complainant that the respondent does not have rights or
legitimate interests is sufficient to shift the burden of proof to the
respondent to demonstrate that such rights or legitimate interests do exist); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, the respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Moreover, where
Respondent does not respond, the Panel may accept all reasonable allegations
and inferences in the Complaint as true.
See 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.”); see
also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a response the panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Respondent is
using the <americaneaglestores.com> domain name, which is
confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark, to
redirect Internet users to a website that provides links to third-party
websites featuring clothing items in direct competition with Complainant’s
business. The Panel finds that such
competing use is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that the respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
the complainant, was not a bona fide offering of goods or services); see
also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that the respondent had no rights or legitimate interests in a domain
name that used the complainant’s mark to redirect Internet users to a
competitor’s website).
Furthermore, no
evidence submitted indicates that Respondent has a substantial affiliation
with, or is commonly known by the <americaneaglestores.com>
name. Complainant has established
itself as the sole holder of all rights and legitimate interests in the
AMERICAN EAGLE OUTFITTERS mark. Since
Respondent has not come forward with a viable alternative supporting its use of
Complainant’s mark and does not have authorization or consent from Complainant
to use the mark, the Panel accepts Complainant’s proposition that Respondent
does not have rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s rights in the mark precede the
respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <americaneaglestores.com> domain name, which is
confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark, to
redirect Internet users to a website that provides links to third-party
websites featuring clothing items in direct competition with Complainant’s
business. Such competing use
constitutes disruption and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing clothing retail websites.
Since Respondent’s <americaneaglestores.com> domain name is
confusingly similar to Complainant’s mark, consumers accessing Respondent’s
domain name may become confused as to Complainant’s affiliation with the
resulting website. Thus, Respondent’s
commercial use of the <americaneaglestores.com> domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Qwest Communications Int’l Inc. v. Ling Shun
Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent registered the <americaneaglestores.com> domain name with actual or constructive knowledge of
Complainant’s rights in the AMERICAN EAGLE OUTFITTERS mark due to Complainant’s
registration of the mark with the United States Patent and Trademark
Office. Moreover, the Panel infers that
Respondent registered the <americaneaglestores.com> domain name with actual knowledge
of Complainant’s rights in the mark due to the obvious connection between the
content advertised on Respondent’s website and Complainant’s business. Registration of a domain name featuring
another’s mark, despite actual or constructive knowledge of another’s rights in
the mark, is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <americaneaglestores.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
June 22, 2005
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