American Eagle Outfitters and Retail Royalty Company v. ahmed eldomany / arabyads
Claim Number: FA2306002047474
Complainant is American Eagle Outfitters and Retail Royalty Company (“Complainant”), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is ahmed eldomany / arabyads (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <american-eagle.site>, <american-eagle.store>, registered with NameCheap, 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 Forum electronically on June 5, 2023; Forum received payment on June 5, 2023.
On Jun 05, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <american-eagle.site>, <american-eagle.store> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2023 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@american-eagle.site, postmaster@american-eagle.store. Also on June 7, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple 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 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: American Eagle Outfitters, Inc. and Retail Royalty Company. Complainants argue that American Eagle Outfitters is the parent company of Retail Royalty. American Eagle Outfitters and Retail Royalty have joint standing as Complainant because they are affiliated companies, and each has an interest in the subject matter of the Complaint.
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 (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 Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (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.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.
A. Complainant
Complainant states that, as one of the top-ranking lifestyle brands, it is a leading global specialty retailer that designs, markets, and sells apparel and other products. Through its portfolio of brands, Complainant offers high quality, on-trend clothing, footwear, accessories, and personal care products. Since opening its first store in the U.S. in 1977, Complainant now operates and licenses numerous stores in the U.S. and in countries around the world under the AMERICAN EAGLE marks, including 901 company-owned stores as of January 30, 2021 and locations throughout the Middle East. Complainant asserts rights in the AMERICAN EAGLE mark based upon its registration in the United States in 1997. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain names are identical or confusingly similar to its AMERICAN EAGLE mark because they incorporate the mark in its entirety, merely adding a hyphen and the generic top level domains (“gTLDs”) “.store” or “.site”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the AMERICAN EAGLE mark. Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as the disputed domain names resolved to webpages that displayed Complainant’s mark and distinctive logo, falsely purporting to provide coupons for AMERICAN EAGLE retail stores and goods. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent is creating a likelihood of confusion with Complainant’s marks. The disputed domain names resolved to webpages offering fake services. Respondent has engaged in a pattern of bad faith registration and use of domain names. Respondent had actual knowledge of Complainant’s rights in the AMERICAN EAGLE marks prior to registration of the disputed domain names. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for the mark AMERICAN EAGLE and uses it to provide apparel and other products. The mark was registered in 1997.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names were registered in 2023.
The resolving websites displayed Complainant’s mark and distinctive logo, falsely purporting to provide coupons for Complainant’s stores and goods. Respondent has engaged in a pattern of bad faith registration and use of domain names.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain names incorporate Complainant’s AMERICAN EAGLE mark in its entirety, merely adding a hyphen and the generic top level domains (“gTLDs”) “.store” or “.site”. The addition of a hyphen as well as a gTLD fails sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its AMERICAN EAGLE mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain names lists the registrant as “ahmed eldomany / arabyads”. Thus the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant provides evidence showing that the disputed domain names resolved to webpages that falsely purported to provide coupon codes for or related to Complainant’s AMERICAN EAGLE stores and goods. This does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See American Eagle Outfitters, Inc. v. Arabyads, FA2205001996765 (Forum June 20, 2022) (finding no bona fide offering of goods or services nor a legitimate noncommercial or fair use when the disputed domains resolved to websites offering fake coupon codes for or related to Complainant’s retail stores and using Complainant’s intellectual property without authorization in doing so); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the dispute domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. 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 names.
Indeed, as already noted, the disputed domain names resolved to webpages falsely purporting to provide coupon codes for Complainant’s stores and goods. Use of a disputed domain name to pass off as a complainant and offer competing services indicates bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See American Eagle Outfitters, Inc. v. Arabyads, FA2205001996765 (Forum June 20, 2022) (finding bad faith due, in part, to the domains resolving to webpages offering fake coupon codes for or related to Complainant’s retail stores and using Complainant’s various intellectual property without authorization in doing so); see also ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Complainant provides evidence showing that Respondent was found have registered and used five domains in bad faith in a prior UDRP proceeding. This is evidence that Respondent engaged in a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving websites displayed Complainant’s mark and distinctive logo, and referred to Complainant’s stores and goods. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith 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 <american-eagle.site>, <american-eagle.store> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 30, 2023
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