Retail Royalty Company, and AEO Management Co. v. Pertshire
Claim Number: FA 1359773
Complainant is Retail Royalty Company, and AEO Management Co. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Pertshire (“Respondent”), Virgin (British) Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwamericaneagleoutfitters.com> and <americaneagleclothingco.com>, registered with Fabulous.Com Pty. Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2010; the National Arbitration Forum received payment on November 22, 2010.
On November 22, 2010, Fabulous.Com Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwamericaneagleoutfitters.com> and <americaneagleclothingco.com> domain names are registered with Fabulous.Com Pty. Ltd. and that Respondent is the current registrant of the names. Fabulous.Com Pty. Ltd. has verified that Respondent is bound by the Fabulous.Com Pty. Ltd. 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 November 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2010 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@wwwamericaneagleoutfitters.com and postmaster@americaneagleclothingco.com. Also on November 24, 2010, 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 December 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
A. Complainant makes the following assertions:
1. Respondent’s <wwwamericaneagleoutfitters.com> and <americaneagleclothingco.com> domain names are confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark.
2. Respondent does not have any rights or legitimate interests in the <wwwamericaneagleoutfitters.com> and <americaneagleclothingco.com> domain names.
3. Respondent registered and used the <wwwamericaneagleoutfitters.com> and <americaneagleclothingco.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Retail Royalty Company and AEO Management Co. are related companies and are known as “American Eagle Outfitters” or “American Eagle.” The Panel will refer to them collectively as “Complainant” throughout this proceeding. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AMERICAN EAGLE OUTFITTERS mark (e.g., Reg. No. 1,893,331 issued May 9, 1995) which it uses in connection with its design, marketing and sale of clothing, accessories, basics, and footwear targeting 15 to 25 year olds.
Respondent, Pertshire, registered the <wwwamericaneagleoutfitters.com> domain name on November 13, 2005 and the <americaneagleclothingco.com> domain name on December 3, 2005. The disputed domain names resolve to websites that feature a commercial search engine and sponsored links to various third-parties, some of whom offer goods and services in direct competition with those offered by Complainant.
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.”).
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 has rights in its AMERICAN EAGLE OUTFITTERS mark based on its registration of the same with the USPTO (e.g., Reg. No. 1,893,331 issued May 9, 1995). Registration with the USPTO is conclusive evidence of a complainant’s rights in a mark, even where the respondent resides or operates in another jurisdiction. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of 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). Therefore, the Panel in this case concludes that Complainant has rights in its AMERICAN EAGLE OUTFITTERS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <wwwamericaneagleoutfitters.com> and <americaneagleclothingco.com> domain names are confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark. Respondent’s <wwwamericaneagleoutfitters.com> domain name contains Complainant’s entire mark, absent the spaces between the terms, and adds the prefix “www” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the “www” prefix does not distinguish the disputed domain name from Complainant’s mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). The Panel also finds that the deletion of spaces and the addition of a gTLD do not sufficiently alter the disputed domain name so as to avoid a finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent’s <americaneagleclothingco.com> domain name incorporates the dominant portion of Complainant’s mark, deletes the term “outfitters” and the space between the terms, and then adds the descriptive term “clothing,” the generic abbreviation for company “co,” and the gTLD “.com.” The Panel finds that the deletion of a term from a mark as well as the addition of descriptive and generic terms are not sufficient to distinguish the disputed domain name from Complainant’s mark. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also American Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Once again, the Panel finds that the deletion of spaces and the addition of a gTLD are not sufficiently distinguishing characteristics of a domain name. See Bond & Co. Jewelers, Inc., supra.
Therefore, the Panel finds that Respondent’s <wwwamericaneagleoutfitters.com> and <americaneagleclothingco.com> domain names are confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark under Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Based on the allegations contained in the Complaint, the Panel finds that Complainant has established a prima facie case. The Panel also infers that Respondent’s failure to submit a Response is additional evidence that Respondent lacks rights and legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent has not been granted permission to use Complainant’s AMERICAN EAGLE OUTFITTERS mark in any way. Complainant also alleges that there is no evidence that Respondent is commonly known by the disputed domain names. The WHOIS registration information also fails to establish that Respondent is commonly known by either of the disputed domain names. Therefore, based on the evidence in the record which supports Complainant’s contentions, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that the disputed domain names resolve to websites that feature a commercial search engine and sponsored links to various third-parties, some of whom offer goods and services in direct competition with those offered by Complainant. The Panel finds that Respondent’s use of the disputed domain names for such a purpose is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Complainant argues that Respondent’s use of the <wwwamericaneagleoutfitters.com> domain name capitalizes on a common typographical error made by Internet users when typing a domain name into a web browser. The Panel agrees and finds that Respondent has engaged in typosquatting which is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain name to display links to third-parties who operate in competition with Complainant constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel also finds that Respondent likely profits from its registration and use of the disputed domain names through the receipt of click-through fees. Therefore, the Panel concludes that Respondent registered and is using the disputed domain names in order to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion as to Respondent’s sponsorship of, or affiliation with, the disputed domain names and resolving websites. The Panel thus supports a finding of bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
As established previously, Respondent has engaged in the practice of typosquatting with regard to its <wwwamericaneagleoutfitters.com> domain name, which the Panel finds is itself evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith).
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 <wwwamericaneagleoutfitters.com> and <americaneagleclothingco.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 28, 2010
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