Aeropostale, Inc. v. Silvachi Holdings Ltd c/o Asset Manager
Claim Number: FA0911001294984
Complainant is Aeropostale, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeropostle.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 18, 2009.
On November 19, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <aeropostle.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that the Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 December 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 22, 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 firstname.lastname@example.org by e-mail.
A Response was received on December 22, 2009. However because this Response was not received in hard copy prior to the Response deadline the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5.
Complainant submitted an Additional Submission on December 23, 2009, which was in compliance with Supplemental Rule 7.
On January 7, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it has established rights in the AEROPOSTALE mark by registration of the mark with the United States Patent and Trademark office. The registration was issued August 13, 1985. Complainant asserts that the disputed domain name <aeropostle.com> is confusingly similar to its mark because it merely omits the letter “a” and adds the generic top-level domain “.com.”
Complainant alleges that Respondent lacks rights or legitimate interests in the domain name because Respondent is not commonly known by the domain name and is taking advantage of Internet users who by mistake type the disputed domain name when they intend to type Complainant’s mark. Complainant contends that Respondent’s website displays links to third parties, some of whom are Complainant’s competitors.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith to take advantage of the inherent confusion between Complainant’s mark and the disputed domain name as a means of obtaining pay-for-click revenue. Complainant accuses Respondent of “typosquatting.”
Respondent contends the mark AEROPOSTALE is not protected because it is the French name for airmail and is therefore generic. Respondent contends that it has rights and legitimate interests in the name which it alleges it has used for approximately ten years in online marketing and promotions. Respondent contends it had a right to use the common term for that purpose.
Respondent also contends that because AEROPOSTALE is a generic term it had a right to register and use it for commercial purposes. Respondent contends that none of the factors that would support a finding of bad faith registration and use are present here.
C. Additional Submissions
In its Additional Submission, Complainant contends that Respondent uses the disputed domain name to foster confusion among Internet users in order to redirect them to third-party websites, which is not a legitimate or fair use. Complainant accuses Respondent of having periodically changed its registration in an effort to mask its identity. Complainant also alleges that it communicated its compliant in a manner that informed Respondent of Complainant’s complaint before the present filing but that Respondent ignored this attempt to resolve the matter.
No doubt exists that Complainant has established rights in the AEROPOSTALE mark within the meaning of Policy ¶4(a)(i) by reason of its August 13, 1985 registration of the mark with the United States Patent and Trademark office. The disputed domain name <aeropostle.com> differs from the AEROPOSTLE mark only by omitting the letter “a” and adding the generic top-level domain “.com.” Moreover, Respondent is not commonly known by the disputed domain name. Nor is there any evidence that Complainant granted any license or permission to Respondent to use the AEROPOSTALE mark.
The record shows that Respondent is using the <aeropostle.com> domain name to resolve to a pay-per-click advertising website displaying links to third-parties, some of whom are Complainant’s direct competitors. Respondent obviously is playing upon the similarity between Complainant’s mark and the disputed domain name as a means to divert Internet users who commit typographical errors to Respondent’s website and the links to third-parties. Respondent is doing so for economic gain. In addition to its registration, Complainant has established that its mark has acquired a secondary meaning in connection with its retail store services. Complainant’s mark is not a generic name in the market in which Complainant competes. Complainant is a mall-based specialty retailer of casual apparel and accessories, whose targets are young men and women between the ages of 14 and 17.
Respondent’s registration and use of the disputed domain name was motivated by an intention to create a likelihood of confusion with Complainant’s mark in order to divert Internet users to Respondent’s website and the links to third-party websites, some of which offer merchandise in competition with Complainant. Respondent’s motivation is commercial gain.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 Forum has determined that Respondent’s Response was deficient because it was submitted only in electronic form before the response deadline. The Panel is of the view that this is a merely technical breach and should not be considered in the adjudication of the merits of the Complaint. J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003).
Respondent accuses Complainant’s representative CitizenHawk, Inc. of being in the business of recruiting companies with trademarks similar to domain names that it wants to acquire and then using those companies as a proxy for domain name actions to secure the names, which CitizenHawk then will profitably use in the same manner that the Complainant accuses the Respondent of employing. The Panel finds that Complainant’s engagement of CitizenHawk to be its representative in this action is not a basis for rejecting the Complaint which otherwise is shown to be authorized by the real party in interest, Aeropostale, Inc. See Canada Israel Experience v. Oranim Travel Ltd. c/o Shlomo Lifshitz, FA 215312 (Nat. Arb. Forum Jan. 30, 2004).
Complainant has established rights in its mark through trademark registration and through extensive promotion and use. The disputed domain name <aeropostle.com> differs from Complainant’s mark only by omitting the letter “a” and adding the generic top-level domain “.com.” The disputed domain name is confusingly similar to Complainant’s AEROPOSTALE mark within the meaning of Policy ¶4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002).
Because Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, the burden is on Respondent to show that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828. Respondent clearly has not been granted any license or permission to use the AEROPOSTALE mark and is not commonly known by the disputed domain name. Respondent’s use of the disputed domain name to resolve to a pay-per-click advertising website displaying links to third-parties for commercial gain succeeds because of the confusing similarity between the domain name and Complainant’s mark. This is not a legitimate or fair use of the disputed domain name. Respondent lacks rights and legitimate interests in the disputed domain name within the meaning of Policy ¶4(a)(ii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007).
Respondent uses the <aeropostle.com> domain name to take advantage of the confusing similarity of the name with Complainant’s AEROPOSTALE mark to divert Internet users to third-party websites, some of which advertise merchandise in competition with Complainant. Respondent registered and uses the domain name to take advantage of the inherent confusion between the disputed domain name and Complainant’s mark for Respondent’s own financial gain. Respondent thus registers and uses the disputed domain name in bad faith within the meaning of Policy ¶4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003. Respondent’s typosquatting is itself evidence of bad faith and reinforces this finding. See Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeropostle.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: January 19, 2010
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