DECISION

American Eagle Outfitters, Inc. and Retail Royalty Company v. John Zuccarini a/k/a Country Walk

Claim Number: FA0304000155178

PARTIES

Complainant is American Eagle Outfitters, Inc., Warrendale, PA (“Complainant”) represented by Kathryn E. Smith of Wood, Herron & Evans, LLP. Respondent is John Zuccarini a/k/a Country Walk, Andalusia, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <americaneagleoutfiters.com> registered with Computer Services Langenbach Gmbh d/b/a Joker.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 21, 2003; the Forum received a hard copy of the Complaint on April 24, 2003.

On April 24, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <americaneagleoutfiters.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com 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 April 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 19, 2003, 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@americaneagleoutfiters.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 Forum transmitted to the parties a Notification of Respondent Default.

On May 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. The domain name registered by Respondent, <americaneagleoutfiters.com>, is confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS mark.

2. Respondent has no rights or legitimate interests in the <americaneagleoutfiters.com> domain name.

3. Respondent registered and used the <americaneagleoutfiters.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMERICAN EAGLE OUTFITTERS mark (Reg. No. 1,597,199 registered on May 22, 1990), related to many products, including clothing. Complainant also has applied and/or obtained registration in several countries outside the U.S 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 <americaneagleoutfiters.com> domain name December 13, 1999. Respondent is using the disputed domain name to redirect Internet traffic to a pornographic website.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of 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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the AMERICAN EAGLE OUTFITTERS mark through registration with the USPTO and by continuous use in commerce since 1977.

The domain name registered by Respondent, <americaneagleoutfiters.com>, is confusingly similar to Complainant’s mark because the disputed domain name appropriates Complainant’s entire mark and merely omits the letter “t” from the mark. The omission of the letter “t” 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 Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding the domain name <statfarm.com> to be confusingly similar to Complainant’s STATE FARM mark).

The Panel finds that Complainant established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant urges that Respondent has no rights to or legitimate interests in the mark.  Respondent did not provide the Panel with a Response in this proceeding. Thus, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (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); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, due to Respondent’s failure to dispute the allegations in the Complaint, the Panel may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response or provided the Panel with evidence to suggest otherwise); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the <americaneagleoutfiters.com> domain name to redirect Internet traffic to a pornographic website. This use 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 MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Respondent proffered no proof and no evidence in the record suggests that Respondent is commonly known by AMERICAN EAGLE OUTFITERS or by the domain name, <americaneagleoutfiters.com>. Thus, Respondent has not established rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent has linked the <americaneagleoutfiters.com> domain name to a pornographic website. The use of a domain name confusingly similar to a registered mark to divert Internet traffic to a website with sexually explicit content is itself evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

Moreover, Respondent is a well-known typosquatter. See Gemstar-TV Guide International, Inc. v. John Zuccarini, FA 115076 (Nat. Arb. Forum Sept. 3, 2002) (finding “Respondent is a notorious typosquatter”); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding that Respondent’s registration of names of famous people, with slight typographical errors, was evidence of bad faith); “Typosquatting” is the practice of registering misspellings of famous marks and linking the registered domain names to other websites for the typosquatter’s commercial gain. Typosquatting has consistently been recognized as evidence of bad faith registration and use. See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <americaneagleoutfiters.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 10, 2003.

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