Aeropostale Procurement Company, Inc. v. Michael Kinsey et al.
Claim Number: FA1403001550933
Complainant: Aeropostale Procurement Company, Inc. of New York, New York, United States of America.
Complainant Representative: Katten Muchin Rosenman LLP of New York, New York, United States of America.
Respondent: Michael Kinsey of Cypress, Texas, United States.
Michael Kinsey of Cypress, Texas, United States of America.
N/A of Cypress, Texas, United States of America.
REGISTRIES and REGISTRARS
Registries: UNO Registry
Registrars: GoDaddy.com, LLC
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 Examiner in this proceeding.
Piotr Nowaczyk, as Examiner.
Complainant submitted: March 26, 2014
Commencement: March 27, 2014
Response Date: April 9, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Procedural Findings:
No domain names are dismissed from this complaint
No domain names are dismissed from this complaint.
Findings of Fact:
The Complainant holds a valid registration for “AEROPOSTALE” trademarks that were register in the US Patent and Trademark Office under following numbers: 1354292, 1485368, 1487211, 1548372, 2680387, 3384078 and 3443836.
The Respondent apologized for registration <aeropostale.uno> and contends that he had not realized it infringes someone's else trademark. The Respondent asserts that he perceived it as a business opportunity. He claims that the domain is not actively used in any form. Moreover, the Respondent admitted that he registered more domain names with gtld ".uno" and after receiving the Notice of Complaint he contacted the Registrar in order to cancel them.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL OR CONFUSINGLY SIMILAR
The Domain Name, <aeropostale.uno> is identical to Complainant's trademarks since it includes the exact wording of the registered trademarks. The Examiner finds that the Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since it proved that it holds a valid national trademark registration. Further, the Complainant confirmed that the registered trademarks are in current use by presenting pictures of its goods produced under the AEROPOSTALE marks as well as screenshots of it website <aeropostal.com>.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent admitted that he is not connected with the Complainant who owns the "AEROPOSTALE" marks. Furthermore, it may be clearly inferred from material provided by the Parties that the Respondent was not authorized to use the marks. Therefore, the Examiner finds that the Respondent has established no rights or legitimate interests in the Domain Name (1.2.6.2. of the UDR Procedure).
BAD FAITH REGISTRATION AND USE
The rule stemming from URS 1.2.6.3 (d) is satisfied since the Respondent admitted that he has registered the domain to take "an opportunity similar to when .com first came into existence" so purely for a reason of expected gain resulting from using the "AEROPOSTALE" mark. It is important that the Respondent could have easily known of the Complainant's trademarks when registering <aeropostale.uno>. The "AEROPOSATLE" marks were registered and used for many years before the domain name was created. Additionally, the Respondent has admitted that he registered more domain names with ".uno" gtld that infringe someone's else rights. This also confirms bad faith of the Respondent.
Finally, the fact that the Respondent was unaware of consequences of his conduct does not exculpate him. In the light of above, the Respondent's declaration about cancelling the domain was not taken into consideration because there were no evidences of such presented.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<aeropostale.uno>
Piotr Nowaczyk, Examiner
Dated: April 28, 2014
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