Aéropostale Procurement Company, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1304001493293
Complainant is Aéropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aeroopostale.com>, <aeropostals.com>, <aeropotstale.com>, and <earopostale.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2013; the National Arbitration Forum received payment on April 5, 2013.
On April 8, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <aeroopostale.com>, <aeropostals.com>, <aeropotstale.com>, and <earopostale.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 April 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 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@aeroopostale.com, postmaster@aeropostals.com, postmaster@aeropotstale.com, and postmaster@earopostale.com. Also on April 16, 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 May 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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.
i. Respondent has not been commonly known by the disputed domain names.
ii. Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent has listed the <aeropotstale.com> domain name for sale.
ii. Respondent is a serial cybersquatter/typosquatter.
iii. Respondent’s links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business.
iv. Respondent has registered and used the disputed domain names by using the disputed domain names to attract and mislead consumers for its own profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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, Aeropostale Procurement Company, Inc., asserts that it is a mall-based specialty retailer of casual apparel and accessories that target customers such as young women and young men from age 14 to 17. Complainant argues that it is the owner of trademark registrations with the USPTO for the AEROPOSTALE mark (e.g., Reg. No. 1,487,211, registered May 3, 1988). The Panel notes that although Respondent appears to reside within Chile, the Panel finds Policy ¶ 4(a)(i) does not require that Complainant does not need to register its mark in the country of Respondent’s residence. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel holds that Complainant’s registration of the AEROPOSTALE mark with the USPTO evidences Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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).”).
Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent adds an additional letter to Complainant’s AEROPOSTALE mark in the <aeroopostale.com> and <aeropotstale.com> domain names. The Panel determines that the addition of a single letter to a mark in a domain name does nothing to differentiate the domain names from the mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). The Panel further notes that Respondent substitutes the letter “e” for the letter “s” in its <aeropostals.com> domain name. The Panel also determines that the substitution of letters in a domain name does not differentiate Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).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”). Further, the Panel notes that Respondent transposes the letter “a” and “e” in the <earopostale.com> domain name. The Panel holds that the transposition of letters in this domain name does not negate confusing similarity under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Accordingly, the Panel concludes that Respondent’s <aeroopostale.com>, <aeropostals.com>, <aeropotstale.com>, and <earopostale.com> are confusingly similar to Complainant’s AEROPOSTALE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has not been commonly known by the disputed domain names. The Panel notes that the WHOIS information for the disputed domain names lists “PPA Media Services / Ryan G Foo” as the registrant. Complainant claims that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel finds that Respondent is not commonly known by the disputed domain names under 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).
Complainant contends that Respondent is using some or all of the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s disputed domain names resolve to web pages that list competing hyperlinks with titles such as “Abercrombie & Fitch,” “Ralph Lauren Online,” and others. Complainant asserts that Respondent receives pay-per-click fees from these linked websites. Thus, the Panel holds that Respondent’s use of the disputed domain names to list competing hyperlinks is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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”).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Complainant claims that Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. The Panel notes that Respondent’s disputed domain names resolve to web pages that list competing hyperlinks with titles such as “Abercrombie & Fitch,” “Ralph Lauren Online,” and others. Therefore, the Panel determines that Respondent is using the disputed domain names to disrupt Complainant’s business under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent has registered and used the disputed domain names in bad faith by using the disputed domain names to redirect unsuspecting Internet users to websites featuring generic links to third-party websites. Complainant argues that Respondent’s setting up “click through” websites for which it likely receives revenue for each misdirected Internet user demonstrates Respondent’s bad faith. The Panel agrees that Respondent’s use of the disputed domain names to divert Internet users from Complainant to Respondent for its own commercial gain shows bad faith use and registration under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant contends that Respondent is a serial cybersquatter/typosquatter. Complainant argues that searches through the NAF decision database reveal that Respondent has engaged in an ongoing pattern of such behavior. See AOL Inc. v. PPA Media Services a/k/a Ryan G Foo, FA 1432688 (Nat. Arb. Forum April 24, 2012); Strathmore Partners LP v. PPA Media Services / Ryan G Foo, FA 1438428 (Nat. Arb. Forum May 21, 2012); Rodney Cobb Chevrolet v. PPA Media Services / Ryan G Foo, FA 1461908 (Nat. Arb. Forum October 23, 2012). The Panel finds that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer demonstrate bad faith use and registration of the disputed domain names under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Thus, Complainant has also satisfied 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 <aeroopostale.com>, <aeropostals.com>, <aeropotstale.com>, and <earopostale.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 24, 2013
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