Aeropostale, Inc. v. Comdot Internet Services Private Limited
Claim Number: FA0912001296976
Complainant is Aeropostale, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aeropolstale.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 2009 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@aeropolstale.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <aeropolstale.com> domain name is confusingly similar to Complainant’s AEROPOSTALE mark.
2. Respondent does not have any rights or legitimate interests in the <aeropolstale.com> domain name.
3. Respondent registered and used the <aeropolstale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Inc., Aeropostale, Inc., is a retailer of casual clothing and accessories. Complainant owns a trademark registration for the AEROPOSTALE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,354,292 issued August 13, 1985).
Respondent registered the <aeropolstale.com> domain name on
Complainant
offers evidence that Respondent has a history of registering domain names
infringing upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See Asbury Auto. Group Inc. v. Comdot Internet Servs. Private Ltd., FA 1178538 (Nat. Arb.
Forum
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.
Respondent registered the <aeropolstale.com> domain name on
The Panel finds Complainant has established rights in the
AEROPOSTALE mark pursuant to Policy ¶ 4(a)(i) through
registration of the mark with the USPTO (Reg. No. 1,354,292 issued August 13,
1985). See Miller Brewing
Complainant argues
that Respondent’s <aeropolstale.com> domain name is confusingly
similar to Complainant’s AEROPOSTALE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in a misspelled manner by adding the letter “l” and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that a disputed domain name that contains a misspelled
version of a complainant’s mark fails to realize a distinguishing
characteristic and creates a confusing similarity between the disputed domain
name and the complainant’s mark. 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 Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to the complainant’s marks). In addition, the Panel finds that the
addition of a gTLD fails to distinguish a disputed domain name from a
registered mark. See Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s <aeropolstale.com> domain name is confusingly
similar to Complainant’s AEROPOSTALE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has sufficiently met its burden of producing a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, it
is Respondent’s responsibility to repudiate Complainant’s assertion and provide
evidence that Respondent does have rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c).
See Towmaster, Inc. v. Hale, FA
973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v.
Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007)
(“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the
burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”). However,
Respondent has failed to respond to the Complaint. Consequently, the Panel may presume that
Respondent has no rights or legitimate interests in the disputed domain name. Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Complainant asserts that Respondent is neither commonly
known by the disputed domain name, nor licensed to register a domain name using
the AEROPOSTALE mark. Respondent’s WHOIS
information identifies the registrant as “Comdot Internet Services Private
Limited” and therefore lacks any defining characteristics relating it to the
disputed domain name. The Panel finds
that without affirmative evidence Respondent is commonly known by the disputed
domain name, Respondent lacks all rights and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun
Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding
that the respondent was not commonly known by the disputed domain names where
the WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum
Respondent’s disputed
domain name resolves to a website featuring click-through links and
advertisements for Complainant’s competitors in the clothing industry. The
Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s
competitors, presumably for financial gain, 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). See Expedia, Inc. v.
Compaid, FA 520654
(Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of
the <expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant was not 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)); see also Metro.
Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar
domain name to divert Internet users to competing websites does not represent a
bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Respondent’s use of the disputed domain name constitutes typosquatting. The disputed domain name contains common
typographical errors and misspellings of Complainant’s AEROPOSTALE mark. The Panel finds that Respondent’s use of the
disputed domain name to redirect Internet users seeking Complainant’s clothing
industry fails to establish rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20,
2007) (concluding that by registering the <microssoft.com> domain name,
the respondent had “engaged in typosquatting, which provides additional
evidence that [the] respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in other UDRP
proceedings, wherein the disputed domain names were ordered to be transferred
from Respondent to the respective complainants in those cases. See Asbury Auto. Group Inc. v. Comdot Internet Services Private Ltd., FA 1178538 (Nat. Arb. Forum
The Panel finds that Respondent intended to disrupt
Complainant’s business and take advantage of Complainant’s goodwill surrounding
its mark by displaying third-party links to Complainant’s competitors in the
clothing industry. The Panel therefore
finds that Respondent engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).
See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also
Respondent has created a likelihood of confusion for
commercial gain as to Complainant’s source and affiliation with the disputed domain name
and the resolving website. Respondent is
presumably monetarily benefiting through the receipt of referral fees accrued
when Internet users click on the competitive links. This constitutes evidence that Respondent has
registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Asbury Auto. Group,
Inc. v.
Lastly, the Panel has already determined that Respondent has
engaged in typosquatting. This practice
has been found to constitute evidence by itself of bad faith registration and
use under Policy ¶ 4(a)(iii). See,
e.g., Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum
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 <aeropolstale.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 12, 2010
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