Aeropostale Procurement Company, Inc. v. Domain Dotter
Claim Number: FA1303001488932
Complainant is Aeropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is Domain Dotter (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aeroipostale.com>, <aeropiostale.com>, <aeropoistale.com>, and <aeroposdtale.com>, registered with WILD WEST DOMAINS, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2013; the National Arbitration Forum received payment on March 7, 2013.
On March 7, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <aeroipostale.com>, <aeropiostale.com>, <aeropoistale.com>, and <aeroposdtale.com> domain names are registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@aeroipostale.com, postmaster@aeropiostale.com, postmaster@aeropoistale.com, postmaster@aeroposdtale.com. Also on March 8, 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 April 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant is a mall-based specialty retailer of casual apparel and accessories that target customers such as young women and young men from age 14 to 17.
2. Complainant is the owner of the federal trademark registrations in the United States that consist of the word AEROPOSTALE registered with the U.S. Patent and Trademark Office's (USPTO). They include the trademark registered for AEROPOSTALE (U.S. Reg. No. 1,487,211).
3. The Disputed Domain Names are nearly identical and confusingly similar to Complainant’s Marks.
4. The Disputed Domain Name is confusingly similar to Complainants Mark because they differ by only a single character from Complainants Mark, or because it differs by only the juxtaposition of two characters when compared to Complainants Mark.
5. This is, therefore, a classic example of typosquatting.
6. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons.
7. Respondent has not been commonly known by the Disputed Domain Names.
8. Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
9. Complainant has not given Respondent permission to use Complainant's Mark in a domain name.
10. Respondent is using the Disputed Domain Names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per click fees from these linked websites. As such, Respondent is not using the Disputed Domain Names to provide a bona fide offering of goods or services as allowed under Policy; 4(c) (i), nor a legitimate noncommercial or fair use as allowed under Policy.
11. The Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons.
12. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
13. Respondent's setting up of a "click through" website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent's bad faith.
14. Respondent's advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
15. Respondent has caused the websites reachable by the Disputed Domain Names to display content and/or keywords directly related to Complainants business.
16. Respondent is a recalcitrant, serial cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a successful and well known mall-based specialty retailer of casual apparel and accessories that target customers such as young women and young men from age 14 to 17 and other products.
2. Complainant is the owner of the federal trademark registrations in the United States that consist of the word AEROPOSTALE including Trademark Reg. No. 1,487, 211 registered with the United States Patent and Trademark Office (“USPTO”) on May 3, 1988 ( “the AEROPOSTALE mark”.).
3. Each of the disputed domain names was registered on April 27, 2007. Respondent is using the disputed domain names to redirect internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has adduced evidence to the effect that it has registered trademarks for AEROPOSTALE with USPTO including Trademark Reg. No. 1,487,211 registered with USPTO”) on April 27, 2007 . The Panel accepts that evidence. Based upon the evidence of the registrations provided, the Panel finds that Complainant has established its rights in the AEROPOSTALE mark under Policy ¶ 4(a) (i). 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).
The second question that arises is whether the disputed domain names are identical or confusingly similar to the AEROPOSTALE mark. The Panel notes that all of the disputed domain names include the generic top-level domain (“gTLD”) “.com, but it is now well established that the top level domain cannot negate a finding of confusion similarity that otherwise exists. Complainant submits that the domain names have been created by taking the AEROPOSTALE mark and including it in its entirety in the domain names and making only minor spelling alterations, namely adding the letter “i’ in the <aeroipostale.com> domain name before the “p”, also adding the letter “i” in the <aeropiostale.com> domain name after the “p”, adding the letter “i” in the <aeropoistale.com> domain name after the second “o” and adding the letter “d” after the “s” in the <aeroposdtale.com> domain name. Complainant submits that this process is typosquatting and the Panel agrees. Moreover, the objective internet user would naturally assume that the domain names were misspellings of Complainant’s mark and business name and that they were therefore domain names of Complainant leading to its website. The domain names are thus confusingly similar to the AEROPOSTALE mark. 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) and Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arab. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerber, FA 780200 (Nat. Arab. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AEROPOSTALE trademark and to use it in its domain names, making minor spelling alterations to them and thus giving the false impression by the construction of the domain names that they are official domain names of Complainant and will lead to official websites of Complainant’s well known business;
(b) Respondent has then used the domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant claims that Respondent is not commonly known by the domain name. Having regard to the whole of the evidence and the likelihood of the situation as contended for by Complainant and having regard to the WHOIS evidence tendered by Complainant, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) The Panel also finds that this clear case of typosquatting negates any possibility of Respondent having a right or legitimate interest in the disputed domain names. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”.).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel agrees and finds that such conduct shows Respondent’s Policy ¶ 4(a)(iii) bad faith use. 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).”).
Secondly, the facts as established by Complainant bring the case squarely within the express provisions of the Policy on bad faith and in particular Policy ¶ 4(b)(iii), prescribing that a respondent engages in bad faith by registering "the domain name primarily for the purpose of disrupting the business of a competitor") and Policy ¶ 4(b)(iv), prescribing that a respondent engages in bad faith when "by using the domain name, [it has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location"); see : Meadowbrook, LLC d/b/a The Land of Nod v. Venkateshawara Distributor Private Ltd., FA1112001419361 (Nat. Arb. Forum Jan. 24, 2012) (finding that setting up a "click-through" website for which respondent likely receives revenue for each misdirected Internet user is evidence of bad faith); La-Z-Boy Chair Company v. CSRUS Enterprises, FA1103001377835 (Nat. Arb. Forum Apr. 21, 2011) (respondent's use of a domain name "to earn click-through fees by attracting Internet users to [a] pay-per-click directory website" demonstrated bad faith registration).
Thirdly, Respondent is using the domain names in order to channel Internet users to third-party websites selling products that compete with those of Complainant, which is evidence of bad faith. There is no doubt that the evidence supports that contention and the Panel so finds. The Panel has examined the evidence submitted by Complainant and has seen that the disputed domain names lead to a site that claims to be an official site for Complainant and to other sites that promote rival companies including J C Penny and many other brands and providers. See Etsy, Inc. v. Elizabeth McKinstry, FA1109001407949 (Nat. Arb. Forum Nov. 1, 2011)(finding that registration and use of domain name to offer unrelated hyperlinks is evidence of bad faith); Fred W: Gretsch Enterprises; Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (respondent acted in bad faith by using Complainant's mark to divert confused customers to websites selling competitors' products).
Fourthly, Complainant submits that Respondent is a recalcitrant, serial cybersquatter / typosquatter and that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. The Panel has examined those documents adduced as evidence by Complainant and finds that Respondent has been making a practice of registering domain names that are clearly cases of typosquatting. Respondent has also been defeated in proceedings where that conduct has been subject to scrutiny. The Panel therefore finds that this conduct emphasizes the bad faith registration and use of Respondent.
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the AEROPOSTALE mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeroipostale.com>, <aeropiostale.com>, <aeropoistale.com>, and <aeroposdtale.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 15, 2013
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