Aéropostale Procurement Company, Inc. v. Song Bin
Claim Number: FA1303001488824
Complainant is Aéropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Song Bin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeropsotale.com>, registered with DYNADOT, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 6, 2013; the National Arbitration Forum received payment on March 6, 2013.
On March 7, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbi-tration Forum that the <aeropsotale.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the names. DYNADOT, LLC has verified that Respondent is bound by the DYNADOT, 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 March 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@aeropsotale.com. Also on March 7, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 April 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a mall-based and online specialty retailer of casual apparel and accessories for young men and women.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the AEROPOSTALE trademark (including Reg. No. 1,487,211, registered May 3, 1988).
Respondent registered the <aeropsotale.com> domain name no earlier than March 10, 2009.
The domain name is confusingly similar to Complainant’s AEROPOSTALE mark.
Respondent has not been commonly known by the disputed domain name.
Respondent is not sponsored by or affiliated with Complainant, and Complainant has never given Respondent permission to use its AEROPOSTALE mark in a domain name.
Respondent uses the disputed domain name to redirect unsuspecting Internet users to a website featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business.
The domain name demonstrates typo-squatting.
Respondent has no rights to or legitimate interests in respect of the disputed domain name.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent is a serial cyber-squatter.
The domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in its AEROPOSTALE trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [Complainant’s] mark is registered with the USPTO, Com-plainant has met the requirements of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter under the UDRP whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights its mark in some jurisdiction).
Turning then to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <aeropsotale.com> domain name is confusingly similar to Complainant’s AEROPOSTALE trademark. The domain name differs from the mark only by the transposition of the letters “o” and “s,” plus the addition of the generic top-level domain (“gTLD”) “.com.” These alter-ations of the mark, made in creating the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark, 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 Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007):
Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent is not sponsored by or affiliated with Complainant in any way, and that Complainant has not given Respondent permission to use Complain-ant’s AEROPOSTALE mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Song Bin,” which does not resemble the contested domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have shown that it has rights to or legitimate interests in it within the con-templation of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAV-ELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had failed to demonstrate that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii)).
We next observe that Complainant contends, and Respondent does not deny, that Respondent uses the disputed domain name to redirect unsuspecting Inter-net users to a website featuring pay-per-click links to third-party websites, some of which directly compete with Complainant’s business. This employment of the domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featur-ing a series of advertising links to various third-parties, many of whom offer prod-ucts and services in direct competition with those offered under [the complain-ant’s] mark,” the respondent was not using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a respondent’s use of a domain name to redirect Internet users to websites unrelated to a UDRP complainant’s mark was not a bona fide use under Policy ¶ 4(c)(i)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent is has established a pattern of behavior that marks it as a serial cyber-squatter. See, for example, Backcountry.com, LLC v. Song Bin, FA 1317284 (Nat. Arb. Forum April 30, 2010), and LENOVO (BEIJING) LIMITED CORPORATION CHINA v. Bin Song, FA 1430690 (Nat. Arb. Forum April 11, 2012). Under Policy ¶ 4(b)(ii), this is evidence that Respondent registered and uses the domain name here at issue in bad faith. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (finding that prior UDRP proceedings in which a respondent was found to have engaged in bad faith registration and use of domain names con-stituted proof that it had done so as well as to the domain names there in issue).
We are also convinced from the evidence that Respondent’s employment of the disputed domain name in the manner described in the Complaint disrupts Com-plainant’s business. This is proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the website resolving from a domain name which was confusingly similar to the mark of another to divert Internet users to the competitors of that UDRP complainant constituted bad faith registration and use of that domain name under Policy ¶ 4(b)(iii)).
And because Respondent employs the domain name in the manner alleged in the Complainant for its profit, it is evident that Respondent registered and uses the domain name in bad faith within the meaning of under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <aeropsotale.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 18, 2013
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