Americaneagleoutfitter.com

The timeline behind americaneagleoutfitter.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION American Eagle Outfitters, Inc. and Retail Royalty Company v. americaneagleoutfitter c/o Web Master Claim Number: FA0503000442221 PARTIES 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. PANEL 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. PROCEDURAL HISTORY 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS 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. FINDINGS 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. DISCUSSION 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. Identical and/or Confusingly Similar 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. Rights or Legitimate Interests 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. Registration and Use in Bad Faith 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. DECISION 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

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.