Aeropostale, Inc. v. Aditya Roshni / Web Services Pty
Claim Number: FA1406001566117
Complainant is Aeropostale, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Aditya Roshni / Web Services Pty (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeropostalle.com>, registered with GODADDY.COM, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2014; the National Arbitration Forum received payment on June 23, 2014.
On Jun 24, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <aeropostalle.com> domain name(s) is/are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 June 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2014 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@aeropostalle.com. Also on June 30, 2014, 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 July 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant, Aeropostale, Inc., has been using the AEROPOSTALE trademark in commerce since the 1980’s in connection with the retail sale of clothing.
ii. Complainant has a valid trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AEROPOSTALE mark (Reg. No. 1354292, registered on August 13, 1985).
iii. The domain name <aeropostalle.com> is confusingly similar to the trademark in which Complainant has rights.
iv. Respondent is not commonly known by the disputed domain name.
v. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with Complainant.
vi. Respondent has engaged in an ongoing pattern of cybersquatting.
vii. Respondent is disrupting the business of Complainant through the use of the disputed domain name.
viii. Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential Complainant customers to products sold by competitors and by collecting click-through revenue from the site.
ix. Respondent’s typosquatting behavior is indicative of bad faith.
x. Respondent registered the domain name <aeropostalle.com> on April 12, 2006.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AEROPOSTALE mark. Respondent’s domain name is confusingly similar to Complainant’s AEROPOSTALE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <aeropostalle.com> domain name, and that Respondent registered and uses the domain name 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 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.”).
Complainant alleges that it has been using the AEROPOSTALE trademark in commerce since the 1980’s in connection with the retail sale of clothing. Complainant has a valid trademark registration with the United States Patent and Trademark Office (“USPTO”) for the AEROPOSTALE mark (Reg. No. 1354292, registered on August 13, 1985). Although respondent resides in India, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register the mark in the country in which Respondent operates. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Complainant’s registration of the mark with the USPTO shows that has rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant urges that the disputed domain name <aeropostalle.com> is confusingly similar to the mark in which Complainant has rights. The domain name merely creates a typographical error in Complainant’s mark. Traditionally, such errors create an inference of confusing similarity. See Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET). Accordingly, the Panel finds that the domain name <aeropostalle.com> is confusingly similar to the AEROPOSTALE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the disputed domain name. The registrant of the disputed domain name is listed as “Aditya Roshni”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. The circumstances here are comparable as the only evidence available to the panel is the name listed in the WHOIS information due to Respondent’s default. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name <aeropostalle.com> under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which compete directly with Complainant. Respondent’s domain name resolves to a webpage that features links that lead to direct competitors of Complainant. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv) as the disputed domain name links Internet users to businesses who directly compete with Complainant. 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 featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent is disrupting the business of Complainant through the use of the disputed domain name <aeropostalle.com>. Complainant claims that Respondent is linking Internet users to direct competitors of Complainant through the resolving website. The links featured are generically phrased advertisements to clothing companies. The Panel therefore determines that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). 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).”).
Respondent urges that Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential customers of Complainant to products sold by competitors and by collecting click-through revenue from the site. Further, it is not unreasonable to infer that Respondent receives compensation for promoting the links. The Panel therefore determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and that Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant alleges that Respondent’s typosquatting behavior is indicative of bad faith. This is an additional basis to find bad faith under Policy ¶ 4(a)(iii). Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeropostalle.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 31, 2014
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