Aeropostale, Inc. v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA0910001292041
Complainant is Aeropostale, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <acropostale.com>, <aerophostale.com>, <aeropistale.com>, <aeroplstale.com>, <aeropopstale.com>, <aeroporstale.com>, <aeropostaale.com>, <aeropostalecom.com>, <aeropostlale.com>, <aeropostlle.com>, <aerupostale.com>, and <aseropostale.com>, registered with Above, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 30, 2009.
On November 1, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <acropostale.com>, <aerophostale.com>, <aeropistale.com>, <aeroplstale.com>, <aeropopstale.com>, <aeroporstale.com>, <aeropostaale.com>, <aeropostalecom.com>, <aeropostlale.com>, <aeropostlle.com>, <aerupostale.com>, and <aseropostale.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names. Above, Inc. has verified that Respondent is bound by the Above, Inc. 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 November 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 23, 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@acropostale.com, postmaster@aerophostale.com, postmaster@aeropistale.com, postmaster@aeroplstale.com, postmaster@aeropopstale.com, postmaster@aeroporstale.com, postmaster@aeropostaale.com, postmaster@aeropostalecom.com, postmaster@aeropostlale.com, postmaster@aeropostlle.com, postmaster@aerupostale.com, and postmaster@aseropostale.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <acropostale.com>, <aerophostale.com>, <aeropistale.com>, <aeroplstale.com>, <aeropopstale.com>, <aeroporstale.com>, <aeropostaale.com>, <aeropostalecom.com>, <aeropostlale.com>, <aeropostlle.com>, <aerupostale.com>, and <aseropostale.com> domain names are confusingly similar to Complainant’s AEROPOSTALE mark.
2. Respondent does not have any rights or legitimate interests in the <acropostale.com>, <aerophostale.com>, <aeropistale.com>, <aeroplstale.com>, <aeropopstale.com>, <aeroporstale.com>, <aeropostaale.com>, <aeropostalecom.com>, <aeropostlale.com>, <aeropostlle.com>, <aerupostale.com>, and <aseropostale.com> domain names.
3. Respondent registered and used the <acropostale.com>, <aerophostale.com>, <aeropistale.com>, <aeroplstale.com>, <aeropopstale.com>, <aeroporstale.com>, <aeropostaale.com>, <aeropostalecom.com>, <aeropostlale.com>, <aeropostlle.com>, <aerupostale.com>, and <aseropostale.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the disputed domain names between April 18, 2007 and May 2, 2009. The disputed domain names resolve to websites that feature links and advertisements, some of which lead to Complainant’s direct competitors.
Respondent
has also been the respondent in several other UDRP proceedings in which the
disputed domain names were transferred from Respondent to the respective
complainants in those cases. See, e.g., State Farm Mut. Auto. Ins. Co. v. Transure Ent. Ltd., FA 1274192
(Nat. Arb. Forum Aug, 27, 2009); Ryder
Sys. Inc. v. Transure Ent. Ltd, FA 1274369 (Nat. Arb. Forum Aug, 31, 2009);
Acad., Ltd. v. Transure
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.
The Panel finds that Complainant has established rights in the AEROPOSTALE mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO (Reg. No. 1,354,292 issued August 13, 1985). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Respondent’s disputed domain names contain Complainant’s AEROPOSTALE mark as well as the following changes: (1) various misspellings in the form of substitutions, additions, and/or removals of letters; and (2) adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition or removal of letters from a mark generally fails to sufficiently distinguish domain names from a mark. The Panel also finds that the addition of a gTLD is not relevant in a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also 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”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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.”).
The WHOIS information for the disputed domain names lists the registrant as “Transure Enterprise Ltd c/o Host Master.” Moreover, Complainant argues that Respondent is not, and has never been, the owner or licensee of Complainant’s mark. Complainant asserts, and the Panel so finds, that Respondent is not nor has ever been commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain names resolve to websites that promote Complainant’s competitors via click-through advertising and links. The Panel presumes Respondent has conducted this venture for the receipt of referral fees. Therefore, the Panel finds that Respondent has failed to create 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Complainant has asserted that Respondent engaged in “typosquatting,” in which a registrant registers a domain name with the intent of diverting Internet users to a different website, by way of common typing errors. In this case, Respondent has misspelled various aspects of Complainant’s mark to produce the different, and confusingly similar, disputed domain names. The Panel therefore finds that Respondent’s use of typosquatting is itself evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has also been the respondent in several other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those cases. See, e.g., State Farm Mut. Auto. Ins. Co. v. Transure Ent. Ltd., FA 1274192 (Nat. Arb. Forum Aug, 27, 2009); Ryder Sys. Inc. v. Transure Ent. Ltd, FA 1274369 (Nat. Arb. Forum Aug, 31, 2009); Acad., Ltd. v. Transure Ent. Ltd, FA 1283916 (Nat. Arb. Forum Oct. 27, 2009). The Panel finds that this constitutes a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004)(“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant contends that Respondent is using the disputed domain names to operate a website displaying advertisements for Complainant’s competitors. The Panel is in accord with Complainant’s contention that this use disrupts Complainant’s business, and therefore the Panel finds that Respondent has engaged in Policy ¶ 4(b)(iii) bad faith registration and use of the disputed domain names. See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant
contends, and the Panel also finds, that Respondent has created a likelihood of
confusion as to Complainant’s source or endorsement of the disputed domain
names and resolving websites. The Panel presumes that Respondent
primarily intended to commercial gain through this registration and use of the
confusingly similar disputed domain names and the advertisements on the
corresponding websites. Therefore, the Panel finds that Respondent has
engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See
Finally, the Panel finds that Respondent’s typosquatting activities are themselves evidence of bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acropostale.com>, <aerophostale.com>, <aeropistale.com>, <aeroplstale.com>, <aeropopstale.com>, <aeroporstale.com>, <aeropostaale.com>, <aeropostalecom.com>, <aeropostlale.com>, <aeropostlle.com>, <aerupostale.com>, and <aseropostale.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 15, 2009
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