national arbitration forum

 

DECISION

 

Aéropostale Procurement Company, Inc. v. Domain Admin

Claim Number: FA1301001480879

 

PARTIES

Complainant is Aéropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Domain Admin (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aerospostale.com>, registered with Moniker Online Services LLC.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2013; the National Arbitration Forum received payment on January 17, 2013.

 

On January 29, 2013, Moniker Online Services Llc confirmed by e-mail to the National Arbitration Forum that the <aerospostale.com> domain name is registered with Moniker Online Services Llc and that Respondent is the current registrant of the name.  Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services Llc 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 February 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2013 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@aerospostale.com.  Also on February 4, 2013, the 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant has rights in the AEROPOSTALE mark by way of numerous United States Patent & Trademark Office (“USPTO”) registrations for the mark.  See Reg. No. 1,354,292 registered on August 13, 1985; Reg. No. 1,487,211 registered on August 18, 1987; Reg. No. 1,487,211 registered on April 19, 1988.

 

Respondent’s <aerospostale.com> domain name is confusingly similar to the AEROPOSTALE mark.  The addition of the generic top-level domain top level domain name “.com” is irrelevant under the Policy.  Respondent has merely added an additional letter to the AEROPOSTALE mark in forming the domain name.

 

Respondent has not been commonly known by the <aerospostale.com> domain name.  The WHOIS record does not illustrate a connection between Respondent and the name.  Complainant has not otherwise licensed, authorized, or permitted Respondent to register domain names featuring the AEROPOSTALE mark.

 

Respondent is not providing a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party and competing websites.  Respondent is likely receiving click-through revenues through this scheme.

 

Respondent is engaged in a classic example of typosquatting.

 

Respondent is engaging in a bad faith disruption of Complainant’s business.  Respondent is diverting potential customers away from Complainant to the various websites advertised on the disputed domain name’s hyperlinks.

 

Respondent is using the domain name to confuse Internet users into believing there is some affiliation between the <aerospostale.com> domain name and Complainant.  Respondent seeks to send Internet users who visit the domain name to competing websites.  Respondent profits commercially in the form of click-through revenues each time a confused Internet user goes through one of the hyperlinks to a third party website.

 

Respondent’s typosquatting is in itself evidence of bad faith use and registration.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns several trademark registrations with the USPTO for the AEROPOSTALE mark.

 

Respondent registered the at-issue domain name after Complainant acquired rights in the AEROPOSTALE mark.

 

Respondent is not licensed or otherwise entitled to use Complainant’s trademark.

 

The at-issue domain name addresses a website featuring generic links to third-party and competing websites.

 

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant has established its rights in the AEROPOSTALE mark under Policy ¶4(a)(i) by showing that it registered the mark the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO).

 

Respondent’s <aerospostale.com> domain name is confusingly similar to Complainant’s AEROPOSTALE mark.  In forming the at-issue domain name Respondent merely inserted an additional letter into the AEROPOSTALE mark, the letter “s.”  The addition of this single character does nothing to alleviate potential consumer confusion between the at-issue domain name and Complainant’s AEROPOSTALE mark. Furthermore, generally and in the instant case the material part of the at-issue domain name for purposes of the Policy is the second level domain name while the addition of the top level domain name, here “.com,” is immaterial. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). 

 

Rights or Legitimate Interests

Respondent lacks either rights or legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in the at‑issue domain names.

 

Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

 

WHOIS information identifies “Domain admin” as the registrant of the at-issue domain name. The registrant’s name is clearly dissimilar to the domain name.  Moreover, there is no evidence that Respondent is otherwise commonly known by the <accesshealthnow.com> domain name notwithstanding the contrary WHOIS information. Therefore the Panel concludes that pursuant to Policy ¶ 4(c)(ii) Respondent is not commonly known by the <accesshealthnow.com> domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites. Some of these linked websites offer products competing with Complainant’s own products.  There are also links to Complainant’s sanctioned website. Respondent likely receives click-through revenues through this scheme.  Respondent’s use of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name.  See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.

 

Respondent is also engaged in typosquatting.  As noted above, the difference between the <aerospostale.com> significant portion of the domain name and the AEROPOSTALE mark is the addition of the letter “s.” Respondent cannot be vested with Policy ¶ 4(a)(ii) rights or legitimate interests in respect of the at-issue domain name when such domain name takes advantage of a common misspelling of Complainant’s AEROPOSTALE trademark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain name was registered is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.

 

As mention elsewhere herein, the <aerospostale.com> domain name resolves to a website featuring a list of hyperlinks to third parties, as well as a link to Complainant’s website. Respondent thereby diverts potential customers away from Complainant to the various third party websites referenced by the at-issue domain name. These circumstances demonstrate that Respondent is engaging in the disruptive practice of redirecting Internet users to a complainant’s competitors. Therefore, pursuant to Policy ¶ 4(b)(iii) Respondent has registered and uses the at-issue domain name in bad faith.  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). 

 

Furthermore, Respondent is using the confusingly similar at-issue domain name to confound Internet users into believing there is some affiliation between the <aerospostale.com> domain name and Complainant when in fact there is not.  Consumers and others looking for Complainant are thereby shepherded to websites that compete with Complainant, as well as to other websites. There is little doubt that Respondent profits commercially in the form of click-through revenues each time a confused Internet user clicks on one of the relevant hyperlinks on Respondent’s website. This scheme is indicative of bad faith registration and use of the domain name under Policy ¶4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). 

 

Finally and as mentioned previously, Respondent is typosquatting. That is, Respondent is trying to capitalize on the fact that Internet users seeking Respondent may mistakenly type <aerospostale.com> into their browser’s address bar and in so doing unintentionally arrive at Respondent’s website.  This activity is in itself evidence of bad faith registration and use under 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).

 

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 <aerospostale.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  March 7, 2013

 

 

 

 

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