Aeropostale, Inc. v. Silvachi Holdings Ltd
c/o Asset Manager
Claim Number: FA0911001294984
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@aeropostle.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.”
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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).
DECISION
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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