Americangirl.net

The timeline behind americangirl.net

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 Girl, LLC v. The Tidewinds Group, Inc Claim Number: FA0802001153605 PARTIES Complainant is American Girl, LLC (“Complainant”), represented by Nikitas E. Nicolakis, of Dunnegan LLC, New York, USA. Respondent is The Tidewinds Group, Inc (“Respondent”), Massachusetts, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <americangirl.net>, registered with Fabulous.com Pty Ltd. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2008. On February 26, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <americangirl.net> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. 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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On March 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 27, 2008 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@americangirl.net by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 2, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <americangirl.net> domain name is identical to Complainant’s AMERICAN GIRL mark. 2. Respondent does not have any rights or legitimate interests in the <americangirl.net> domain name. 3. Respondent registered and used the <americangirl.net> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, American Girl, LLC, markets dolls, doll related accessories and other child entertainment items under its AMERICAN GIRL mark. Complainant has provided evidence that it first registered its AMERICAN GIRL mark with the United States Patent and Trademark Office (“USPTO”) on June 13, 2006 (Reg. No. 3,103,403, filed January 14, 2005). Respondent registered its <americangirl.net> domain name March 28, 2002. Respondent’s disputed domain name resolves to a website which displays links to other commercial websites. 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. 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. Identical and/or Confusingly Similar Complainant has provided evidence of the registration of its mark with the USPTO. The Panel finds this is sufficient evidence to establish Complainant’s rights in its AMERICAN GIRL mark pursuant to Policy ¶ 4(a)(i). See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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 Panel further finds that Complainant’s rights to the mark date back to its USPTO trademark application filing date of January 14, 2005. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Respondent’s <americangirl.net> domain name is identical to Complainant’s AMERICAN GIRL mark because it fully incorporates Complainant’s mark without the space between the two terms, and with the addition of the generic top-level domain (“gTLD”) “.net,” both of which are considered irrelevant for the purposes of evaluating a disputed domain name under the UDRP. Therefore, the Panel finds Respondent’s disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark). The Panel finds Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel assumes Respondent does not have rights or legitimate interests in the disputed domain name. The Panel will nevertheless examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Respondent’s disputed domain name resolves to a website which displays links to commercial websites. The Panel finds this use is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name). Additionally, Respondent does not appear to be commonly known by the <americangirl.net> domain name. The WHOIS information indicates Respondent is “The Tidewinds Group, Inc.” and the record does not indicate Complainant has authorized Respondent to use its AMERICAN GIRL mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). The Panel finds Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Complainant has provided evidence of its rights in the mark through the registration of its AMERICAN GIRL mark with the USPTO. Panels have held that Complainant’s registration with the USPTO creates rights in the mark dating back to the filing date of the application. The earliest evidence of Complainant’s registration of its AMERICAN GIRLS mark with the USPTO dates back to an application filing date of January 14, 2005. Complainant has not provided any evidence that it possessed common law rights or other trademarks previous to this date. Since Respondent registered the disputed domain name on March 28, 2002, approximately three years before Complainant has alleged rights in the mark, the Panel finds Respondent did not register or use the mark in bad faith pursuant to Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark). The Panel finds Policy ¶ 4(a)(iii) has not been satisfied. DECISION Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <americangirl.net> domain name REMAIN with Respondent. Sandra J. Franklin, Panelist Dated: April 16, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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