Aéropostale Procurement Company, Inc. v. Venkateshwara Distributor Private Limited
Claim Number: FA1212001476714
Complainant is Aéropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Venkateshwara Distributor Private Limited. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aeropostele.com> and <wwwaeropostale.com>, registered with Tirupati Domains and Hosting Private Limited.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2012; the National Arbitration Forum received payment on December 19, 2012.
On December 26, 2012, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <aeropostele.com> and <wwwaeropostale.com> domain names are registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the names. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 January 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 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@aeropostele.com, postmaster@wwwaeropostale.com. Also on January 8, 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 February 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 allegations:
1. Complainant is the owner of the AEROPOSTALE mark, which it uses to market and designate its products, including men’s apparel, ladies’ apparel, accessories, wallets, handbags, jewelry, cosmetics, and its retail department store services.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,487,211 registered May 3, 1988). See Exhibit E.
3. Complainant is a mall-based retailer and sells casual apparel and accessories, with its target customer base being young women and men between the ages of 14 and 17.
4. Complainant sells its products at its mall-based stores and at its website at <aeropostale.com>.
5. Complainant derives its mark from the name of a 1920s airmail firm, Compagnie Generale Aéropostale, which was originally created by R.H. Macy & Co., and later turned into a specialty store in the 1980s. Complainant’s revenue for 2011 was $2.4 billion, with a 3.66% growth as of April 2012.
6. Complainant’s Internet business is more profitable than its mall stores. Complainant’s AEROPOSTALE mark has wide consumer recognition, and Complainant continues to spend substantial amounts of resources on advertising and promoting its AEROPOSTALE mark.
7. Respondent registered the <aeropostele.com> and <wwwaeropostale.com> domain names, which are confusingly similar to Complainant’s AEROPOSTALE mark.
8. Respondent uses the disputed domain names to redirect Internet users to a website containing links to third-party businesses who sell merchandise in competition with Complainant’s business.
9. Complainant presumes Respondent receives pay-per-click fees in exchange for linking the websites at its webpage.
10. The domain names are confusingly similar to Complainant’s mark, and are typosquatted from Complainant’s mark.
11. Respondent is not commonly known by either of the <aeropostele.com> or <wwwaeropostale.com> domain names and fails to demonstrate rights or legitimate interests in the disputed domain names.
12. Respondent registered and uses the disputed domain names in bad faith by generating revenue for itself through operation of a click-through website and using the domain name to compete with Complainant’s business.
13. Respondent has numerous UDRP decisions against it showing that it is engaged in a pattern of bad faith registration and use.
Respondent failed to submit a Response in this proceeding.
1. Respondent’s <aeropostele.com> and <wwwaeropostale.com> domain names are confusingly similar to Complainant’s AEROPOSTALE mark.
2. Respondent does not have any rights or legitimate interests in the <aeropostele.com> and <wwwaeropostale.com> domain names.
3. Respondent registered or used the <aeropostele.com> and <wwwaeropostale.com> domain names in bad faith.
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.”).
Complainant makes the allegation that it owns the AEROPOSTALE mark through its USPTO trademark registrations (e.g., Reg. No. 1,487,211 registered May 3, 1988). In Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panel concluded that the complainant’s rights in its mark were established under Policy ¶ 4(a)(i) throught its trademark registrations of the mark with the USPTO, and the Panel likewise determines that Complainant has successfully demonstrated its rights in the mark under Policy ¶ 4(a)(i) by its USPTO registration. The Panel also concludes that Policy ¶ 4(a)(i) does not mandate that Complainant register its mark in the same country of Respondent’s residence and operation. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant asserts that the <aeropostele.com> and <wwwaeropostale.com> domain names are confusingly similar to Complainant’s AEROPOSTALE mark, as a result of the domain names’ use of the entire mark. Complainant argues that the disputed domain names include the generic top-level domain (“gTLD”) “.com” and that the domain names differ from the mark by only a single character, as a result of juxtaposing characters in the mark or using one incorrect character. The Panel notes that the <aeropostele.com> domain name does indeed use an incorrect character by replacing a letter “a” with the letter “e” in the mark, but the <wwwaeropostale.com> domain name uses the correct spelling of Complainant’s mark and adds the prefix “www” to the beginning of the mark. The Panel concludes that both disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i), as the <aeropostele.com> domain name replaces one letter in the mark with a different letter, the <wwwaeropostale.com> domain name includes the “www” prefix, and both domain names include the gTLD “.com.” 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 Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); 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).
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by either the <aeropostele.com> domain name or the <wwwaeropostale.com> domain name, and provides its Exhibit I as evidence, which shoes the WHOIS record for the domain name and does not reflect the registrant as being commonly known by either of the disputed domain names. The Panel observes that the WHOIS information discloses that “Venkateshwara Distributor Private Limited” is the registrant of the disputed domain names and concludes that Respondent is not known by either the <aeropostele.com> or the <wwwaeropostale.com> domain names pursuant to Policy ¶ 4(a)(i). 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).
Complainant alleges that Respondent’s lack of rights or legitimate interests in the disputed domain names is shown by its use of the resolving websites to offer misdirected Internet users hyperlinks to competing businesses’ websites. See Exhibit H. The Panel determines that Respondent’s use of hyperlinks to Complainant’s competitors fails to demonstrate use of the <aeropostele.com> and <wwwaeropostale.com> domain names to make 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). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant makes the assertion that Respondent is engaged in typosquatting of the AEROPOSTALE mark by its registration of both the <aeropostele.com> and <wwwaeropostale.com> domain names. Complainant alleges in its Policy ¶ 4(a)(i) section that Respondent takes advantage of Internet users’ mistakes when attempting to find Complainant’s website, which leads them to Respondent’s infringing domain names. The Panel determines that the <aeropostele.com> domain name, by containing one incorrect character, and the <wwwaeropostale.com> domain name, by including the prefix “www” without a period following it, are typosquatted varieties of Complainant’s AEROPOSTALE mark, and finds that Respondent’s typosquatting is evidence that Respondent lacks rights or legitimate interests in either domain name under Policy ¶ 4(a)(ii). See 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).”); see also Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because respondent's addition of the prefix "www-" to complainant's AMAZON.COM mark constitutes typosquatting.”).
Complainant makes the argument that Respondent is party to a number of UDRP cases that have been decided against Respondent, and contends that the previous adverse decisions are evidence of Respondent’s ongoing pattern of bad faith registration and use. See Pacific Sunwear.com Corp v. Venkateshwara Distributor Private Ltd., FA 1279901 (Nat. Arb. Forum Sept. 29, 2009); see also Williams-Sonoma, Inc. v. Venkateshwara Distributor Private Ltd., FA1361215 (Jan. 6, 2011). The panel in Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), stated that prior UDRP proceedings provided adequate evidence of the respondent’s pattern of bad faith registrations. The Panel similarly concludes that multiple adverse UDRP decisions against Respondent provide evidence of Respondent’s pattern of bad faith registration and use of the current disputed domain names pursuant to Policy ¶ 4(b)(ii).
Complainant asserts that the links Respondent provides at its resolving website compete with Complainant, which disrupts Complainant’s business by diverting potential customers away from Complainant to other entities’ websites. The Panel determines that misdirecting consumers to competitors’ online businesses is disruptive and shows Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See 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).”).
Complainant sets forth the contention that Respondent’s maintenance of the domain names to host click-through websites that generate profits by redirecting Internet users to other businesses’ sites demonstrates bad faith. Complainant alleges that Respondent attempts to attract and mislead consumers for its own profit. The panel in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), concluded that the respondent’s bad faith registration and use was shown by the respondent’s registration of a confusingly similar domain name to the complainant’s mark to offer hyperlinks to third-party websites offering similar services to those of complainant. The Panel determines that Respondent registered and uses the <aeropostele.com> and <wwwaeropostale.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) as a result of using confusingly similar domain names to mislead consumers into visiting competitors’ websites and resulting in profit to Respondent.
Complainant argues that Respondent’s typosquatting of domain names that are mere misspellings of Complainant’s AEROPOSTALE mark is evidence of bad faith registration and use. Complainant contends that Respondent intentionally registered domain names that represent Internet users’ common typographical errors and are calculated to take advantage of such Internet users. The Panel concludes that the <aeropostele.com> and <wwwaeropostale.com> domain names are misspellings of Complainant’s mark and finds that by typosquatting domain names based on Complainant’s mark, Respondent is engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeropostele.com> and <wwwaeropostale.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 15, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page