Aéropostale Procurement Company, Inc. v. Domenico Piscicelli
Claim Number: FA1209001462788
Complainant is Aéropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domenico Piscicelli (“Respondent”), represented by Avv. Roberto Manno, Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <areopostale.com>, registered with Server Plan SRL.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2012; the National Arbitration Forum received payment on September 14, 2012. The Complaint was submitted in both Italian and English.
On September 17, 2012, Server Plan SRL confirmed by e-mail to the National Arbitration Forum that the <areopostale.com> domain name is registered with Server Plan SRL and that Respondent is the current registrant of the name. Server Plan SRL has verified that Respondent is bound by the Server Plan SRL 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 1, 2012, the Forum served the Italian language Complaint and all Annexes, including an Italian language Written Notice of the Complaint, setting a deadline of October 22, 2012 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@areopostale.com. Also on October 1, 2012, the Italian language 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.
A timely Response in the English language was received and determined to be complete on October 17, 2012.
On October 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
In this case, the Registration Agreement is written in Italian with no specification that an administrative proceeding be rendered in any other language. Also, the Respondent is Italian. However, Complainant is incorporated in the United States of America. Moreover, although the Complaint was filed in both English and Italian, Respondent has filed the Response in English. As both parties have demonstrated that they are conversant in English and neither party has stated a preference for any language, the Panel, in the exercise of its authority granted under said Paragraph 11(a), is inclined to adopt the English language for these proceedings. In reaching this decision, the Panel notes also that English is widely used in international relations and is the working language of the National Arbitration Forum. See Coloplast A/S v. Thomas Sugar, D2009-1005 (WIPO Sept. 30, 2009) (finding English to be the appropriate proceedings language, though the registration agreement was in Danish, noting among other things that “[t]he record also indicates that the Respondent has no trouble in communicating in English.”); see also Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, D2003-0989 (WIPO Feb. 12, 2004).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant is an American company, originating in the 1980s, that operates as a mall-based specialty retailer of casual apparel and accessories targeting young women and men aged from 14 to 17.
- Complainant’s products can be purchased at its stores or online through its domain name, <aeropostale.com>, which was registered by Complainant in 1997.
- Complainant had net revenues of USD$2.4 Billion in 2011, and more than USD$45 Million in Internet sales as of 2007.
- Complainant has used the trademark, AEROPOSTALE, in connection with its products since its inception, and the Italian search engine, GOOGLE.IT, yields clear results concerning Complainant’s website and trademark. There is wide consumer recognition and acceptance of Complainant’s apparel brand.
- Complainant owns several registrations of the AEROPOSTALE mark with the United States Patent and Trademark Office (“USPTO”).
- The disputed domain name, <areopostale.com>, is nearly identical and confusingly similar to the AEROPOSTALE trademark, as the only difference involves the transposition of the two letters, “e” and “r.” Respondent’s registration of the disputed domain name is a simple case of typosquatting.
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant is not affiliated with Respondent and has not given Respondent permission to use Complainant’s mark in a domain name. Moreover, Respondent is not commonly known as the disputed domain name.
- Respondent uses the disputed domain name to redirect Internet users to a third party website in an attempt to receive “click-through” or “affiliate” fees from the Amazon affiliate program, which use breaches the terms of that program and is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
- Respondent has also failed to respond to Complainant’s “cease and desist” letter.
- The disputed domain name was registered and is being used in bad faith. The date of registration, March 7, 2002, occurred significantly after Complainant’s first use and registration of its trademark.
- Typosquatting is, in and of itself, evidence of bad faith. Moreover, Respondent’s redirection of internet users in violation of a third party affiliate agreement and to gain commercially from confusion with Complainant’s trademark is further evidence of bad faith. Finally, Respondent’s bad faith is demonstrated by its registration and use of other domain names that appear to be straightforward examples of typosquatting with respect to other established marks.
B. Respondent
- Without evidence of intent to benefit from user typographical errors, it is not possible to assert that there is confusing similarity between the disputed domain name, <areopostale.com>, and Complainant’s AEROPOSTALE mark.
- As Compagnie Générale Aéropostale was a pioneering aviation company founded in Toulouse in 1918, Europeans, such as Respondent, would not perceive “aeropostale” in reference to Complainant’s rights. Other European companies have trademark rights in the “Aeropostale” name.
- “Aeropostale” is the adjective used by the General Airmail Company to distinguish “airborne postal services.” Moreover, in both the French and Italian languages, “aeropostale” is a generic or descriptive word equivalent to “airmail” in the English language.
- Using generic or dictionary words for profit through internet traffic is not prohibited under the UDRP. Since “areopostale” has no meaning in either French, Italian or English, capitalizing on such a term through internet use should be even more allowable under the UDRP. As a result, Respondent refused to answer any of Complainant’s “cease and desist” letters.
- Respondent is not misusing the Amazon Affiliate Program to take advantage of Complainant’s trademark rights or the generic “aeropostale” term, since the disputed domain name is composed of a nonsense word.
- Respondent’s activities do not disturb Complainant’s business.
- Complainant’s contention that Respondent’s use of the nonsense term “areopostale” constitutes typosquatting, and automatically means that Respondent is engaged in bad faith, is invalid.
Founded in the 1980’s, Complainant is an American company that markets specialty casual apparel and accessories online and through its mall-based outlets. It has obtained registrations for its AÉROPOSTALE and AEROPOSTALE trademarks with the USPTO (e.g., Reg. No. 1,354,292, registered Aug. 13, 1985 and Reg. No. 3,361,416, registered Jan. 1, 2008, respectively). In 1997, Complainant also registered the domain name, <aeropostale.com>, for use in connection with its business.
Respondent is the owner of the disputed domain name, <areopostale.com>, and the date of registration was March 7, 2002. Respondent uses the disputed domain in the Amazon Affiliate Program as a method to generate fees for Respondent.
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.
Complainant has presented the Panel with clear evidence (Exhibit E) that Complainant owns valid USPTO registrations for the AEROPOSTALE trademark, which satisfies the Panel that Complainant has sufficient rights in that mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (“The Policy does not require that the mark be registered in the country in which the Respondent operates. It is sufficient that a complainant can demonstrate a mark in some jurisdiction.”).
In the Panel’s view, there is little question that the disputed domain name, <areopostale.com>, is confusingly similar to the AEROPOSTALE trademark of Complainant. The minimal differences consist of the transposition of the second and third letters, “e” and “r,” and the inconsequential addition of the “.com” suffix. Moreover, in the Panel’s opinion, the pronunciation of both terms would be extremely similar. See Stanworth Development Limited v. Jazette Enteprises, D2011-0249 (WIPO Mar. 31, 2011) (where <gamingculb.com> was found to be confusingly similar to the mark, GAMING CLUB); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Gardline Surveys Ltd. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Thus, Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel has recognized the confusing similarity between the disputed domain name and Complainant’s mark and accepts Complainant’s undisputed assertions that it is not affiliated with Respondent and has not granted Respondent permission to use that mark in a domain name. As a consequence, the Panel accepts that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, placing the onus on Respondent to mount a convincing rebuttal. See ACCOR v. Pham Manh Ha, D2007-1855 (WIPO Feb. 4, 2008) (“The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Respondent’s rebuttal to Complainant’s prima facie case appears to the Panel to be marked by contradiction. On the one hand, Respondent alludes to the legitimacy of profiting financially from the registration of domain names composed of generic or descriptive words that are used in connection with the plain meaning of those words. On the other hand, Respondent contends emphatically that the disputed domain name, <areopostale.com>, as opposed to the term “aeropostale,” is not common word in either French, Italian or English. Then, without apparent logic or citation for the proposition, Respondent asserts that if registering descriptive domain names in accordance with what they describe is legitimate, then certainly registering nonsense terms – or non-descriptive terms – must be necessarily legitimate.
Respondent does cite several prior UDRP cases to support his contentions, but the Panel finds that all are easily distinguishable from the present case. In Sferra Bros. Ltd. v. Michelle Dinoia, D2006-0054 (WIPO Feb. 27, 2006) and Sallie Mae, Inc. v. Michelle Dinoia, D2004-0648 (WIPO Oct. 18, 2004), the panels found that the disputed domain names, <sferra.com> and <sallie.com>, were based on, respectively, a common Italian surname and a common English female proper name, not a nonsense term as in the instant case. First Place Financial Corp. v. Michele Dinoia, FA 506772 (Nat. Arb. Forum Aug. 22, 2005) and Frey Farms Produce LLC v. SZK.com c/o Michele Dinoia, FA 1122529 (Nat. Arb. Forum Feb. 11, 2008) presented the respective panels with circumstances in which the respective complainant failed to establish ownership of the requisite trademark or service mark rights prior to registration of the respective disputed domain name, which, again, is not the circumstance found in this case. In Todito.com, S.A. de C.V. v. Michele Dinoia, D2002-0620 (WIPO Aug. 26, 2002) and T.V. Azteca, S.A. de C.V. v. Dinoia Michele, D2008-0787 (WIPO July 29, 2008), both panels ruled that the disputed domain name, <hechos.com>, was composed of the generic and descriptive Spanish language word, “hechos;” as distinct from the present case, where the disputed domain name, <areopostal.com>, is, as Respondent himself has emphasized, composed of the nonsense term, “areopostal.”
Finally, in OVB Vermögensberatung AG v. Michele Dinoia, D2009-0307 (WIPO May 6, 2009), the learned panelist found a lack of bad faith where the respondent was using the disputed domain name, <ovb.com>, composed of a relatively generic combination of letters, to possibly infringe, not on complainant’s trademark rights, but upon a third party’s trademark rights by advertising products similar to those marketed by said third party. Once again, this is unlike the present case, where the Panel accepts Complainant’s evidence (Exhibit K) that the disputed domain name has been used by Respondent, through the Amazon Affiliate Program, to reference products offered for sale by Complainant. Also, Respondent has not contradicted Complainant’s contention that Respondent receives remuneration from this use and reference. Consequently, the Panel, in line with the consensus of prior Policy decisions, finds that such use is neither a bona fide offering of goods or services per Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Sports Auth. Mich., Inc., v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the disputed domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the disputed domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii)).
Furthermore, Respondent does not contend, and there is no other evidence in the record to suggest, that he, Domenico Piscicelli, has been commonly known as <areopostale.com>.
In sum, the Panel concludes that Respondent has failed to rebut Complainant’s prima facie case through applicability of Policy ¶ 4(c) or otherwise.
Accordingly, the Panel rules that Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel believes that whether or not the disputed domain name was registered and is being used in bad faith centers on the intent of Respondent. Respondent has argued vigorously that “aeropostale” is a common French and Italian word and that collecting money from the registration and use of domain names comprised of common or descriptive words is a legitimate enterprise. Why then would he register what he describes as a nonsense word? A nonsense word, “areopostale,” that is nearly identical to the common word, “aeropostale.” The Panel is compelled to conclude that Respondent, in 2002, determined that the latter term was already taken – by Complainant – as a domain name.
The “worldwide web” is exactly that. Anyone in the world, including Italy, can quickly gauge the existence or usage of any domain name by simply logging on. This action takes little time and almost no resources beyond ownership of a computer. Once logging onto a domain name – like <aeropostale.com> (registered and in use by Complainant since1997) – and viewing goods offered under a trademark that is spelled precisely the same as that domain name, only someone of decidedly less than average intelligence would fail to ascertain that the owner of that domain name also owned that trademark. Since the Panel surmises that Respondent is intelligent and educated, the Panel must conclude that Respondent was well aware of Complainant’s mark and its rights when he registered the disputed domain name. This simple investigation would not have placed any undue burden, say, in the form of a comprehensive international trademark search or the like, upon Respondent.
Moreover, after Respondent undoubtedly researched Complainant’s website, he concluded reasonably that a domain name that was confusingly similar to Complainant’s domain name – and trademark – would draw more internet traffic than usual for one composed of a “nonsense” term, because internet users seeking Complainant’s goods might inadvertently mistype Complainant’s domain name. This would lead Respondent to the inevitable deduction that such a domain name – the disputed domain name – would have enhanced value and generate more “click-through” revenue as a result of this user confusion. The Panel believes that such commercial gain, derived through deception, is what Respondent intended upon registering and using the disputed domain name. Therefore, the Panel determines that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
In defense of his actions, Respondent cites the prior Policy case, Vanguard Trademark Holdings USA LLC v. Administrator, Domain / Vertical Axis, Inc., FA 1383694 (Nat. Arb. Forum May 31, 2011), where the panel decided there was no bad faith on the part of the respondent in registering and using the disputed domain name, <natiional.com>, with respect to the complainant’s NATIONAL trademark. However, in that case, the panel reasoned crucially as follows:
“Respondent argues that it registered the disputed domain name as a misspelling of the word “national,” but without any specific targeting of the NATIONAL mark. Therefore, the disputed domain name simply describes the website and the pay-per-click hyperlinks relate to the generic term.” [emphasis added]
In this case, Respondent has presented no evidence to the Panel that the links found at the disputed domain name, <areopostale.com>, relate to the generic term “aeropostale,” (or “airmail” in English). As noted above, Complainant has shown the Panel that the disputed domain name is attached to a website that refers to Complainant’s goods, which bear no relation to the generic meaning of “aeropostale” or “airmail.” Thus, the Panel declines to apply the reasoning in the cited case to this case.
As a result, the Panel finds that Complainant has demonstrated that the disputed domain name was registered and is being used in 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 <areopostale.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: November 6, 2012
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