Retail Royalty Company and AE Direct Co LLC v. Pham Dinh Nhut
Claim Number: FA1609001695915
Complainant is Retail Royalty Company and AE Direct Co LLC (“Complainant”), represented by Kristin Garris of Kilpatrick Townsend & Stockton LLP, New York, United States. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aaerie.com> and <aeerie.com> (‘the Domain Names’), registered with April Sea InformationTechnology Company Limited.
The undersigned certifies that 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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2016; the Forum received payment on September 28, 2016. The Complaint was submitted in both Vietnamese and English.
On October 6, 2016, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <aaerie.com> and <aeerie.com> domain names are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company 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 October 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2016 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@aaerie.com, postmaster@aeerie.com. Also on October 11, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
The language of this proceeding should be English even though the apparent registration agreement for the Domain Names is in Vietnamese because (a) Respondent is familiar with and has availed himself of the English language in connection with the Domain Names (b) the content posted at the sites used for the Domain Names is in English (c) Respondent uses ISPs in the United States whose web sites are in English and (d) Respondent will not be disadvantaged if the language of the Proceedings is in English. Requiring the Complainant to proceed in the Vietnamese language would be burdensome and costly and cause a delay. Further the Respondent has a history of registering domain names in English.
Complainant owns a number of registered marks containing the AERIE mark including in Vietnam where the Respondent is based and has used that name and mark since 2006 to identify the Complainant’s goods and services including clothing, accessories, cosmetics, fragrances and retail services.
As a result of years of Complainant’s use and promotion of its AERIE marks the public and the trade recognize and associate the AERIE marks with the Complainant and its high quality goods and services.
The Domain Names were registered between October and December 2011 well after the Complainant’s mark became well known.
The Domain Names are confusingly similar to the Complainant’s well-known AERIE mark as they differ from the Complainant’s mark by only one letter, an additional ‘a’ in aaerie.com and an additional ‘e’ in aeerie.com. The misspelling of the Complainant’s mark by adding or duplicating one letter is a classic example of typosquatting and neither it, nor the addition of a gTLD distinguishes the Domain Names from the Complainant’s mark. There is no phonetic difference due to the addition of the extra letter in each of the Domain Names.
Respondent has no rights or legitimate interests in the Domain Names. There is no relationship between the Complainant and Respondent giving rise to any permission to use the Domain Names. The Domain Names are not a legitimate name of the Respondent. Typosquatting indicates a lack of rights or legitimate interest in the Domain Names in itself. Use for linking portals is not a legitimate noncommercial purpose.
Respondent has registered and is using both Domain Names in bad faith for commercial gain to benefit from the Complainant’s reputation and goodwill. Use of a famous name for click through portals is bad faith. Respondent has intentionally attempted to attract Internet users to Respondent’s web sites by creating a likelihood of confusion with the Complainants' AERIE marks as to the source, affiliation or endorsement of the Respondent’s sites. Typosquatting in itself amounts to bad faith. Respondent is a known typosquatter reflecting a pattern of conduct on the part of the Respondent in registering domain names in bad faith.
Respondent is a serial cybersquatter and has been found by numerous panels to have registered and used in bad faith domain names based on the trade marks of third parties. Respondent has used the Domain Names for click through linking portals with sponsored links leading to web sites of competitors of the Complainant, to unrelated sites and to the Complainant’s web site for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has a registered trade mark for AERIE, inter alia, in the United States with first use in commerce recorded as 2006.
The Domain Names appear from the WhoIS records to have been registered in 2007 or 2008 and have been use to point to sites containing sponsored links to sites unconnected with the Complainant including sites competing with the Complainant.
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(f), 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 (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.”).
Preliminary Issue on the language of the Agreement
It is apparent to the Panel that the Respondent has been registering domain names in English and attaching English content to them and so the Respondent will not be prejudiced if these proceedings are conducted in English. Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Vietnamese language Complainant and Commencement notification and, absent a response, determines the remainder of the proceedings may be conducted in English.
Identical and/or Confusingly Similar
The Domain Names both consist of signs highly similar to the Complainant's mark AERIE with the addition of the gTLD .com. In the case of aaerie.com an extra ‘a’ has been added and in the case of aeerie.com an extra ‘e’ has been added. Accordingly both Domain Names appear to be typosquatted versions of the Complainant’s registered mark AERIE.
Panels have commonly held that the addition of one letter to a mark does not distinguish a domain name from a Complainant’s mark. 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 gTLD .com does not serve to distinguish the Domain Names from the AERIE mark, which is the distinctive component of the Domain Names. See Red Hat Inc. v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not given the Respondent permission to use the Domain Names. The Respondent does not appear to be commonly known by the Domain Names, is not using them to offer bona fide goods and services and is not making a legitimate noncommercial or fair use of them. The site appears to be set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights to make a profit by pointing to third party links competing with the Complainant's goods. See ALPITOUR SpA v Albloushi FA 888651 (Forum Feb. 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy.)
Additionally the Domain Names appear to be typosquatted versions of the Complainant's domain name chosen in the hope that a customer might mistakenly reach Respondent's web site by mistakenly typing additional letters when intending to access the Complainant’s site. See Amazon.com, Inc. v JJ Domains, FA 514939 (Forum Sept. 2, 2005)(respondent lacks rights and legitimate interests in the www-amazon.com domain name because the addition of 'www-' constitutes typosquatting).
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant has provided evidence that the Respondent has attempted to disrupt the Complainants business by its use of the Domain Names providing links that resolve to third party commercial sites that compete directly with the Complainants. See Univ. of Texas Sys. v Smith, FA1195696 (Forum July 7, 2008) (finding that using the resolving web site to divert Internet users to the Complainant's competitors constitutes bad faith registration and use under the Policy.)
Complainant also alleges that the Respondent's use is commercially designed to make profit from linking to third party web sites that compete with the Complainant in a confusing manner. The use is confusing in that visitors to the site might reasonably believe the sites attached to the Domain Names are connected to or approved by the Complainant as they offer clothing under Domain Names which are a typosquatted version of the Complainant’s Domain Name. The use to link to competing clothing sites suggests the Respondent is aware of the Complainant and its goods and business.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of its sites pursuant to Policy 4 (a) (iv). (See Asbury Auto Group Inc. v Tex. Int'l Prop Assoc FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
Finally, typosquatting itself is evidence of relevant bad faith registration and use. See Vanguard Group Inc. v IQ Mgmt. Corp FA 328127 (Forum Oct. 28, 2004)(By engaging in typosquatting respondent has registered and used the vangard.com domain name in bad faith pursuant to Policy 4(a) (iii).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy and there is no need to consider further contentions made by the Complainant re 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 <aaerie.com> and <aeerie.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 8, 2016
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