Aeropostale Procurement Company, Inc. v. Private Whois aeropoastale.com
Claim Number: FA1111001416938
Complainant is Aeropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Whois aeropoastale.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeropoastale.com>, registered with Internet.bs Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2011; the National Arbitration Forum received payment on November 22, 2011.
On November 24, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <aeropoastale.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@aeropoastale.com. Also on November 30, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <aeropoastale.com> domain name is confusingly similar to Complainant’s AEROPOSTALE mark.
2. Respondent does not have any rights or legitimate interests in the <aeropoastale.com> domain name.
3. Respondent registered and used the <aeropoastale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aeropostale Procurement Company, Inc., is a mall-based specialty retailer of casual apparel and accessories that targets customers from ages 14 to 17. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AEROPOSTALE mark:
Reg. No. 1,354,292 registered August 13, 1985;
Reg. No. 1,548,372 registered July 18, 1989; &
Reg. No. 3,443,836 registered June 10, 2008.
Respondent, Private Whois aeropoastale.com, registered the <aeropoastale.com> domain name on November 6, 2009. The disputed domain name redirects to a website featuring links to third-party websites, some of which compete 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. 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.
Complainant owns multiple trademark registrations with the USPTO for the AEROPOSTALE mark:
Reg. No. 1,354,292 registered August 13, 1985;
Reg. No. 1,548,372 registered July 18, 1989; &
Reg. No. 3,443,836 registered June 10, 2008.
The Panel finds that a trademark registration with the USPTO establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i), even when Respondent lives or operates in a country different from where the trademark registration is held. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <aeropoastale.com> domain name is confusingly similar to Complainant’s AEROPOSTALE mark because the disputed domain name inserts the letter “a” into the mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that inserting an additional letter into Complainant’s mark to create the disputed domain name does not differentiate the disputed domain name from the mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)). The Panel also holds that a gTLD is an essential element of domain names and therefore plays no role in determining confusing similarity between the disputed domain name and Complainant’s 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel determines that Respondent’s <aeropoastale.com> domain name is confusingly similar to Complainant’s AEROPOSTALE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires only that Complainant make a prima facie case before the burden then shifts to Respondent to demonstrate rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has presented a prima facie case in these proceedings. Due to Respondent’s failure to respond to Complainant’s allegations against it, the Panel may assume the allegations are true and conclude that Respondent lacks rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”); 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.”). The Panel elects, however, to consider the evidence presented in light of the Policy 4(c) factors to determine whether Respondent has rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant also contends that it has not given Respondent permission to use the AEROPOSTALE mark in any way. The WHOIS information for the disputed domain name identifies the registrant as “Private Whois aeropoastale.com,” which does not reflect any association with the disputed domain name. The Panel finds that where the WHOIS information does not nominally associate the Respondent/registrant with the disputed domain name, the evidence supports a conclusion that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). Respondent’s disputed domain name resolves to a directory website featuring multiple links to competing third-party websites with titles such as “Aeropostale Clothes,” “Girls Clothing,” “Mens Clothes,” etc. The Panel finds that using a disputed domain name in this manner only to redirect Internet users to other third-party websites is inconsistent with Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent uses a common misspelling of Complainant’s mark as the disputed domain name in order to capitalize on frequent mistakes made by Internet users seeking Complainant. The Panel finds that this practice constitutes typosquatting, which is evidence that Respondent lacks rights and legitimate interests in the disputed domain name according 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 name 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 Diners Club Int’l Ltd. v. Domain Admin******It’s all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <www.dinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis a vis the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant does not make any specific allegations under Policy ¶ 4(b)(iii), but it does allege that the resolving website features many pay-per-click links for competing apparel companies and websites. The Panel finds that these links disrupt Complainant’s business by advertising Complainant’s competitors and potentially diverting customers away from Complainant. The Panel holds that Respondent’s efforts to disrupt Complainant’s business in this way signals bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant argues that Respondent uses the confusingly similar <aeropoastale.com> domain name to take advantage of Complainant’s well-known mark and attempt to attract the unwary Internet user who inadvertently makes a mistake when attempting to enter Complainant’s mark. The disputed domain name then resolves to a page where Respondent lists numerous links to third-party websites with the intent of profiting from pay-per-click fees if any of the diverted Internet users click on one of the links. The Panel finds Respondent’s intentions to profit by fraudulently attracting Complainant’s customers constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to Complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar disputed domain name. The Panel finds that typosquatting is evidence in and of itself of bad faith registration and use under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds 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 <aeropoastale.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 9, 2012
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