Aeropostale, Inc. v. Swallowlane Holdings Ltd c/o Hostmaster Hostmaster
Claim Number: FA0906001271289
Complainant is Aeropostale,
Inc. (“Complainant”), represented by
CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com>, registered with Rebel.com Corp.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 1, 2009.
On July 3, 2009, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names are registered with Rebel.com Corp. and that Respondent is the current registrant of the names. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 29, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@aeeropostale.com, postmaster@aeropaostale.com, postmaster@aeropostaleclothingstore.com, postmaster@aeropostalke.com, postmaster@aeropostaple.com, postmaster@aerotostale.com, postmaster@aerpopostale.com, and postmaster@aoeropostale.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 makes the following assertions:
1. Respondent’s <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names are confusingly similar to Complainant’s AEROPOSTALE mark.
2. Respondent does not have any rights or legitimate interests in the <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names.
3. Respondent registered and used the <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aéropostale, Inc., markets and sells casual apparel and accessories. Complainant has operated under the AEROPOSTALE mark since 1980. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AEROPOSTALE mark (i.e., Reg. No. 1,354,292 issued August 13, 1988).
Respondent registered the <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names no earlier than November 2, 2006. The disputed domain names resolve to websites featuring links to third parties, some of which are Complainant’s competitors.
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."
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.”).
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.
Previous panels have found that a complainant establishes rights in a mark through a registration of the mark with a governmental trademark authority. Therefore, the Panel finds Complainant has established rights in the AEROPOSTALE mark through registration of the mark with the USPTO 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, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
The <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names contain either common misspellings of Complainant’s mark or the addition of descriptive terms, “clothing store,” to Complainant’s mark. The disputed domain names further contain the generic top-level domain (“gTLD”) “.com.” The Panel finds common misspellings and the addition of a descriptive term fail to distinguish the disputed domain names from Complainant’s AEROPOSTALE mark. The Panel further finds the addition of the gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights or legitimate interests in the <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). 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 Policy ¶ 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent’s disputed domain names resolve to a website featuring links to Complainant’s competitors. The Panel infers Respondent profits through click-through fees from the links. The Panel finds Respondent’s use of the disputed domain names are not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The WHOIS information, provided by Complainant, lists Respondent as “Swallowlane Holdings Ltd.” Respondent fails to offer evidence contradicting this information and showing Respondent is commonly known by the disputed domain names. There is no other evidence on the record showing Respondent is commonly known by the disputed domain names. Complainant further asserts that Respondent is not authorized to use the AEROPOSTALE mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to 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); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
In addition, Respondent’s use of the <aeeropostale.com>, <aeropaostale.com>, <aeropostalke.com>, <aeropostaple.com>,
<aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com>
domain names constitutes typosquatting.
The Panel finds that Respondent’s use of domain names that are common
misspellings of the AEROPOSTALE mark to redirect Internet users seeking
Complainant’s website fails to establish rights or interests pursuant to Policy
¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names resolve to websites featuring links to Complainant’s competitors and other unrelated third parties. The Panel finds that Respondent likely profits from click-through fees. Therefore, the Panel finds that this use of confusingly similar disputed domain names constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent receives click-through fees from the use of the aforementioned hyperlinks. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and the resolving website. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Furthermore, Respondent has engaged in typosquatting through its use of the <aeeropostale.com>, <aeropaostale.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names, which contain common misspellings of Complainant’s AEROPOSTALE mark. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use pursuant to Policy 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds Complainant has established 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 <aeeropostale.com>, <aeropaostale.com>, <aeropostaleclothingstore.com>, <aeropostalke.com>, <aeropostaple.com>, <aerotostale.com>, <aerpopostale.com>, and <aoeropostale.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 17, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum