Aeropostale Procurement Company, Inc. v. mega ventures limited / mega ventures limited
Claim Number: FA1408001576294
Complainant is Aeropostale Procurement Company, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is mga ventures limited / mga ventures limited (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeroposrtale.com>, registered with Go China 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 August 21, 2014; the National Arbitration Forum received payment on August 21, 2014.
On August 22, 2014, Go China Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <aeroposrtale.com> domain name is registered with Go China Domains, LLC and that Respondent is the current registrant of the name. Go China Domains, LLC has verified that Respondent is bound by the Go China 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 August 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@aeroposrtale.com. Also on August 27, 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 September 19, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
1. Complainant uses the AERPOSTALE mark in connection with the promotion and sale of clothing. The mark is registered with the United States Patent and Trademark Office ("USPTO"). The <aeroposrtale.com> domain name is a confusingly similar misspelling of the AEROPOSTALE mark and nothing more.
2. Respondent has no rights in the <aeroposrtale.com> domain name. Respondent is not known by the <aeroposrtale.com> domain name. The <aeroposrtale.com> domain name is used only to promote various advertisements of goods that in some cases compete with those of Complainant.
3. Respondent registered and used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is engaged in the retail industry with a specialty in casual clothes and accessories for young men and women.
2. Complainant owns the AERPOSTALE mark which is registered to Complainant with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,354,292 registered Aug. 13, 1985).
3. The <aeroposrtale.com> domain name was registered on July 26, 2011.
4. The domain name resolves to a website with links to other websites promoting products that in some cases compete with those of Complainant.
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 claims it uses the AEROPOSTALE mark in connection with retail services. The Panel notes the mark has been registered by Complainant with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,354,292 registered Aug. 13, 1985). The Panel concludes that the trademark registration satisfies the Policy ¶ 4(a)(i) rights requirement. 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.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AEROPOSTALE mark. Complainant claims the <aeroposrtale.com> domain name is confusingly similar to the AEROPOSTALE mark. The Panel notes the domain name includes the introduction of the letter “r” and the generic top-level domain (“gTLD”) “.com” to the mark. The Panel finds the domain name to be confusingly similar under Policy ¶ 4(a)(i) because there is no sufficient difference between the domain name and the mark. See, e.g., Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
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 name 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. Arb. 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. 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.”).
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 used it in its domain name with only a minor spelling alteration;
(b) Respondent has then used the domain name to redirect Internet users to sponsored listings, or advertisements, featuring links to third-party websites, some of which directly compete with Complainant;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d)Complainant argues Respondent simply is not commonly known as the
<aeroposrtale.com> domain name. The Panel notes the WHOIS information lists “mga ventures limited” as the registrant of record for the disputed domain name. The Panel agrees that the information available is unable to show any meaningful evidence that Respondent has ever been commonly known by this <aeroposrtale.com> domain name. See Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum Mar. 13. 2002) (“The Panel finds that due to the distinct nature of Complainant's COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy 4(c)(ii).”);
(e)Complainant claims the <aeroposrtale.com> domain name is used to promote generic links to businesses, some of which compete with Complainant. The Panel notes that Respondent has caused the <aeroposrtale.com> domain name to resolve to websites promoting advertisements such as Complainant’s own websites, AMERICAN EAGLE goods, and various related advertising. See Compl., at Attached Ex. H. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel did not find a bona fide offering when the domain name’s sole purpose was to direct users to third-party advertising. The Panel finds Respondent has made no Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See also 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).
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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent is a recalcitrant cybersquatter. The panel notes the decisions Complainant provides in Exhibit N. See, e.g., Humana, Inc. v. MGA Enterprises Ltd., D2006–1405 (WIPO Feb. 23, 2007). The Panel agrees these cited decisions present viable evidence of Policy ¶ 4(b)(ii) bad faith. See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Secondly, Complainant argues that the presence of competing ads on the website to which the <aeroposrtale.com> domain name resolves is evidence of Policy ¶ 4(b)(iii) bad faith through a commercial disruption. The Panel agrees that Respondent’s use of the domain name is clearly for a variety of competing and AEROPOSTALE-related advertising. See Compl., at Attached Ex. H. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel found that the presence of competing advertising was evidence of bad faith disruption. The Panel here similarly agrees that Respondent is disrupting Complainant’s AEROPOSTALE operations in Policy ¶ 4(b)(iii) bad faith.
Thirdly, Complainant claims Respondent is using the disputed domain name to capitalize on the likelihood Internet users will be confused as to Complainant’s association with this disputed domain name. See Compl., at Attached Ex. H. The Panel finds that the use of the domain name to house competing advertisements meets the requirements of 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).”).
Fourthly, Complainant argues that Respondent has engaged in typosquatting, which is further evidence of Respondent’s bad faith. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel wrote, “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).” The Panel agrees that Respondent’s registration and use of the <aeroposrtale.com> domain name amounts to typosquatting on Complainant’s AEROPOSTALE mark, and therefore finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
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 name using Complainant’s AERPOSTALE mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the second 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 <aeroposrtale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 20, 2014
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