Aéropostale Procurement Company, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1311001528177
Complainant is Aéropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aerepostale.com>, <aeropostake.com>, <aeropotale.com>, <awropostale.com>, and <eaeropostale.com>, registered with Internet.bs Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2013; the National Arbitration Forum received payment on November 4, 2013.
On November 5, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <aerepostale.com>, <aeropostake.com>, <aeropotale.com>, <awropostale.com>, and <eaeropostale.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. 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 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2013 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@aerepostale.com, postmaster@aeropostake.com, postmaster@aeropotale.com, postmaster@awropostale.com, and postmaster@eaeropostale.com. Also on November 5, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Aéropostale, Inc. is a mall-based retailer of casual apparel and accessories that targets customers including young men and women ages 14 through 17.
Complainant owns rights in the AEROPOSTALE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”)
The disputed domain names are confusingly similar to Complainant’s AEROPOSTALE mark because each of the disputed domain names differ from Complainant’s mark by a single character or by the juxtaposition of two characters.
Respondent was not given permission to use Complainant’s mark in a domain name and is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). Respondent is using some or all of the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent has listed some or all of the disputed domain names for sale at an auction sale. Respondent has demonstrated bad faith disruption of Complainant’s business by using the disputed domain names to host links to Complainant’s competitors in the casual apparel industry. Respondent’s use of the disputed domain names misleads Internet users for Respondent’s own commercial gain. Respondent’s typosquatting behavior is evidence of bad faith in and of itself.
The earliest date on which Respondent registered one of the disputed domain names was December 7, 2004.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for AEROPOSTALE.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademarks mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the AEROPOSTALE trademark.
Respondent is using some or all of the disputed domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
Respondent has listed some or all of the disputed domain names for sale at an auction sale.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of AEROPOSTALE with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its marks where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Each of the <aerepostale.com>, <aeropostake.com>, and <awropostale.com> fully incoprorates Complainant’s AEROPOSTALE mark while eliminating one character and replacing it with another letter: replacing the letter “o” with an “e;” the letter “l” with a “k;” and the letter “e” with a “w.” Further, the <aeropotale.com> domain name fully incorporates Complainant’s AEROPOSTALE mark but eliminates the letter “s” while the <eaeropostale.com> incorporates the AEROPOSTALE mark but simply adds an additional letter, “e.” Therefore each of the at-issue second level domain names differs from Complainant’s mark by a single character or by the juxtaposition of two characters. To properly form each of the at-issue domain names Respondent adds the top level domain name “.com” to each of the at-issue second level domain names. In no case is the difference between any one of Respondent’s at-issue domain names and Complainant’s trademark sufficient to distinquish one from the other under Policy ¶ 4(a)(i). Therefore, the Panel finds that each at-issue domain name is confusingly similar to Complainant’s AEROPOSTALE trademark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also, Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also, 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)); see also, 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).
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively as to each of the at-issue domain names.
The WHOIS information for Respondent’s domain names identifies the domain name registrant as “Fundacion Private Whois / Domain Administrator” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by any one of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using some or all of the at-issue domain names to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Some of the links entitled “Aeropostale” redirect visitors to parked websites displaying an array of links concerning merchandise competing with that offered by Complainant. Thus, each of Respondent’s at-issue domain names is being used to facilitate hyperlinks to Complainant’s competitors in the clothing/apparel industry. Respondent’s use of the at-issue domain names in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below as to each at-issue domain name Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent has listed some or all of the at-issue domain names for sale at an auction site. Attempting to sell the confusingly similar domain names in which Respondent lacks any rights or interests suggests Respondent’s bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Next, Respondent’s use of the at-issue domain names to host links to Complainant’s competitors in the casual apparel industry is disruptive to Complainant’s business. Such use demonstrates Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶ 4(b)(iii). See, e.g., United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii)”).
Furthermore, the at-issue confusingly similar domain names are also used in a manner that misleads Internet users as to the sponsorship of the domain names such that Respondent may commercially gain. The similarity of the domain names to Complainant’s trademark falsely conveys to at least some Internet users that Complainant authorizes, endorses, or sponsors the websites addressed by the confusingly similar domain names. The confusion is accompanied by added traffic at the at-issue websites and Respondent thereby benefits via an increase in related click-through fees. Accordingly, Respondent’s behavior demonstrates bad faith registration and use of the domain names pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website”).
Finally, Respondent is typosquatting. Typosquatting is a form of cybersquatting that relies on typographical errors made when Internet users mistype or misspell an Internet destination encompassing a trademark into a browser’s address bar or into a search engine’s input field. The typosquatter expects that a significant number of mistyped addresses will match the form of mistake the typosquatter registered as a domain name and that thereby wayward visitors will inadvertently end up on a website controlled by the typosquatted. Once on a typosquatter controlled website the visitor may be exploited via pay-per-click links and/or otherwise. Here, each of the at-issue domain names is a mistyping or misspelling of Complainant’s trademark. Therefore, there is no doubt that Respondent’s purpose in registering and using the at-issue domain names was to typosquat on Complainant’s AEROPOSTALE trademark. Typosquatting, in and of itself, shows bad faith under Policy ¶4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aerepostale.com>, <aeropostake.com>, <aeropotale.com>, <awropostale.com>, and <eaeropostale.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 2, 2013
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