WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A�ropostale West, Inc. v. Whois Protection
Case No. D2007-1271
1. The Parties
The Complainant is A�ropostale West, Inc of Wayne New Jersey, United States of America, represented by Katten Muchin Rosenman LLP, of United States of America.
The Respondent is Whois Protection, of the Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2007. On August 29, 2007, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On August 29, 2007, R Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2007.
The Center appointed John Swinson as the sole panelist in this matter on October 8, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company registered in the United States of America. The Complainant manufactures and retails clothing and accessories. The Complainant uses the A�ropostale name in connection with the provision of such goods and services.
The Complainant is the owner of a number of A�ROPOSTALE trademark and service mark registrations worldwide including an A�ROPOSTALE trademark which has been registered in the United States of America since May 3, 1988 (Reg No. 1,487,211). The Complainant has registered a number of domain names incorporating the A�ROPOSTALE mark, including the domain name . The Complainant’s goods can be purchased by Internet users via this website.
The Respondent registered the disputed domain name on November 9, 2005. The website contains links to websites offering clothing and accessories for sale. It also contains a link to the Complainant’s official “www.” site.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following statements and arguments:
The Complainant is a leading manufacturer of clothing and accessories. The Complainant has used its A�ROPOSTALE mark continuously since its first adoption. It operates over 700 A�ropostale retail stores, all of which are organized, displayed and marketed in a manner uniquely associated with the Complainant. The Complainant has expanded over time to establish a significant online presence for its services, selling clothing and accessories through its Internet site at “www.”. The A�ROPOSTALE mark has been extensively used and promoted by the Complainant for a long period and has acquired distinctiveness and a secondary meaning signifying the Complainant.
The Complainant owns over 45 trademark and service mark registrations worldwide for its AEROPOSTALE mark.
The Respondent’s domain name is virtually identical and confusingly similar to the Complainant’s A�ROPOSTALE mark. The disputed domain name incorporates the Complainant’s mark, excluding the second “o” in the Complainant’s mark. Such exclusion is a common typographical error. The disputed domain name registered by the Respondent was a purposeful misspelling of the Complainant’s mark, intended to take advantage of this common typographical error that consumers are likely to make when attempting to enter the Complainant’s website. Confusion is likely to result because the website contains express references to the Complainant.
The Respondent has no rights or legitimate interests in the domain name. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The disputed domain name is used to intercept and siphon off Internet traffic intended for the Complainant’s website.
The Respondent is using a misspelling of the Complainant’s mark to intentionally attract users and subject them to advertising and promotional sites for apparent commercial gain. The Respondent’s use of the disputed domain name is likely to frustrate consumers and detract traffic from the Complainant’s legitimate website, resulting in lost sales and other damage to the Complainant.
The Respondent registered the disputed domain name in bad faith. The Respondent had full knowledge of the A�ROPOSTALE mark, as evidenced by the direct links to the Complainant’s business contained on the “www.” website.
Bad faith is evidenced by the fact that the disputed domain name is used to provide links to Internet sites selling products identical to those sold by the Complainant, as well as to the Complainant’s official site. The Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. By preventing customers from finding the Complainant’s website, the Respondent is disrupting the Complainant’s business.
The Complainant sent a cease and desist letter to the Respondent on August 6, 2007, requesting transfer of the disputed domain name. The Respondent did not reply.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant has registered a significant number of trademarks consisting of the word A�ropostale and associated logos in the United States of America, Thailand, South Africa, Malaysia and Egypt. The Complainant’s presence is primarily in the United States of America, where it operates stores in almost every State. The Panel finds that, based on the evidence presented, that the Complainant has accrued significant goodwill in the A�ROPOSTALE name and mark in the United States of America through extensive use of the mark over the past 20 years. The Panel finds that the Complainant has trademark rights in the A�ROPOSTALE mark.
The next issue is whether the disputed domain name is identical, or confusingly similar, to the trademark in which the Complainant has rights.
The only difference between the Complainant’s mark and the disputed domain name is that the second “o” has been omitted from the mark. It has previously been held that slight changes in name may be purposeful misspellings, ‘designed to take advantage of mistakes that consumers are likely to make when intending to enter Complainant’s website address’ (see InfoS, Inc v. Registrar Administrator Lew Blanck (WIPO Case No. D2000-0069); Nicole Kidman v. John Zuccarini (WIPO Case No. D2000-1415)). The Panel finds that the omission in this case is designed for such a purpose, particularly because the Complainant’s mark is made up of a large number of letters, where the absence of one letter does not make a significant difference between the two words. The omission of the “o” does not therefore remove any confusion with the Complainant’s mark.
The disputed domain name is therefore confusingly similar to the Complainant’s A�ROPOSTALE mark. (See Credit Industriel et Commercial S.A., and Confederation Nationale Credit Mutuel v. Owen Webster (WIPO Case No. D2006-0165)). The Panel finds that the requirements of the Policy paragraph 4(a)(i) are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Respondent, in not submitting a response, has not provided evidence of the circumstances listed in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right to or legitimate interest in the domain name.
The Complainant has not granted the Respondent any license or other authorization to use its trademarks in relation to the disputed domain name.
The Respondent does not appear to make any legitimate use of the domain name for non-commercial activities. On the contrary, the Respondent is, for its own commercial gain, using the disputed domain name to intercept Internet traffic which is clearly intended for the Complainant’s website.
The Respondent is deliberately using confusion with the Complainant’s mark to direct users to the disputed domain name which contains advertising and linked promotional sites relating to the same type of goods and services offered by the Complainant.
It is very unlikely that the Respondent would legitimately choose the disputed domain name unless it was seeking to create an impression of an association with the Complainant.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, in the disputed domain name and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-exhaustive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Subparagraph (iv) includes circumstances where the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent registered the disputed domain name in 2005. The Complainant’s A�ROPOSTALE trademark has been in existence for almost twenty years. Aerospatiale is a major clothing brand sold primarily in the United States of America, but also known in other countries.
The Panel infers that the Respondent had actual knowledge of the Complainant’s rights in A�ROPOSTALE at the time it registered the disputed domain name, and by intentionally removing one letter from this mark, it registered the disputed domain name in bad faith. Actual knowledge of the Complainant’s trademarks and activities at the time of the registration of the disputed domain names may be considered an inference of bad faith. (See Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409.
The Panel infers that the Respondent clearly has actual knowledge of the existence of the A�ROPOSTALE mark, as evidenced by the direct references to the mark contained on the “www.” website, and the direct link to the Complainant’s official site. The Complainant has also advised the Respondent of its rights in the A�ROPOSTALE mark.
The omission of one letter from the Complainant’s mark is designed to take advantage of customers’ typographical errors when attempting to enter the Complainant’s website. As such, the Respondent has intentionally attempted to attract users to its website by creating a likelihood of confusion with the Complainant’s mark. Given that the disputed domain name currently carries advertising and linked promotional sites relating to clothing, it may be inferred that this is for the Respondent’s commercial gain.
The Panel therefore finds that paragraph 4(b)(iv) is satisfied in this case and that the registration and use of the disputed domain name has been in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: October 22, 2007
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