American Eagle Outfitters, Inc. and
Retail Royalty Company v. americaneagleoutfitter c/o Web Master
Claim
Number: FA0503000442221
Complainant is American Eagle Outfitters, Inc. and Retail Royalty Company (collectively “Complainant”), represented
by Kathryn E. Smith, of Wood Herron and Evans, L.L.P., 2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is americaneagleoutfitter c/o Web Master (“Respondent”), General
Delivery, Georgetown Grand Cayman GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americaneagleoutfitter.com>, registered
with Address Creation.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 17, 2005.
On
March 21, 2005, Address Creation confirmed by e-mail to the National
Arbitration Forum that the domain name <americaneagleoutfitter.com>
is registered with Address Creation and that Respondent is the current
registrant of the name. Address
Creation has verified that Respondent is bound by the Address Creation 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
March 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 11, 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@americaneagleoutfitter.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
April 15, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 <americaneagleoutfitter.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 <americaneagleoutfitter.com> domain
name.
3. Respondent registered and used the <americaneagleoutfitter.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Retail Royalty Company, is a wholly owned subsidiary of Complainant, American
Eagle Outfitters, Inc. These two
entities will be collectively referred to as “Complainant.”
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. Complainant also has applied for and/or obtained registration in
several countries outside the United States such as Mexico, Singapore and
Japan. Complainant’s <americaneagleoutfitters.com> domain name resolves
to Complainant’s retail website, where consumers can purchase Complainant’s
apparel directly.
Respondent
registered the <americaneagleoutfitter.com> domain name March 25,
2002. Respondent is using the disputed domain name to redirect Internet users
to a website that provides links to retail clothing websites 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 in commerce. The domain name registered
by Respondent, <americaneagleoutfitter.com>, is confusingly
similar to Complainant’s mark because the disputed domain name incorporates the
dominant features of Complainant’s mark and merely omits the letter “s” from
the word “outfitters.” The omission of the letter “s” does not sufficiently
differentiate the domain name from the mark with regard to Policy ¶ 4(a)(i)
because Complainant’s mark continues to be the dominant element of Respondent’s
domain name. See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000)
(finding <americanairline.com> "effectively identical and certainly
confusingly similar" to the complainant's AMERICAN AIRLINES registered
marks).
Additionally,
Respondent’s <americaneagleoutfitter.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
deviates with the addition of the generic top-level domain “.com.” The mere addition of a generic top-level
domain does not negate the confusing similarity between Respondent’s domain name
and Complainant’s mark 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.
Respondent has failed
to respond to the Complaint. Thus, the
Panel may accept all reasonable allegations and assertions set forth by
Complainant as true and accurate. 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 Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the <americaneagleoutfitter.com>
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <americaneagleoutfitter.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See 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);
see also Bank of Am.
Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is
using the <americaneagleoutfitter.com> domain name, which is
confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark, to operate
a website that features links to competing clothing retailers. 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). Thus, the Panel
finds that Respondent lacks rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
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 <americaneagleoutfitter.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 to use the mark,
the Panel may accept the proposition proposed by Complainant that Respondent
has no rights or legitimate interests in the domain name under Policy ¶
4(c)(ii), despite listing its name as “americaneagleoutfitter c/o Web Master”
in the WHOIS contact information. See
Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name
despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Neiman Marcus Group, Inc. v.
Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole
holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in
holding that the respondent was not commonly known by the
<neiman-marcus.net> name, despite naming itself “Neiman-Marcus”
in its WHOIS contact information).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <americaneagleoutfitter.com> domain name, which is
confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark, to operate
a website that features links to competing clothing retailers. 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 <americaneagleoutfitter.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 <americaneagleoutfitter.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 <americaneagleoutfitter.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 <americaneagleoutfitter.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 <americaneagleoutfitter.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated:
April 27, 2005
National Arbitration Forum