The Complainant is American Apparel, Inc. of Los Angeles, California, United States of America, represented internally.
The Respondents are Moniker Privacy Services of Pompano Beach, Florida, United States of America and Taranga Services Pty Ltd of Wellington, New Zealand.
The disputed domain name <americanapperal.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2010. Moniker Privacy Services was named as the Respondent. The Complainant asserted its belief that Moniker Privacy Services was a registration alias provided as a service by the registrar of the Domain Name, Moniker Online Services, LLC, to allow for private registration. On March 26, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On March 29, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on March 30, 2010, naming both Moniker Privacy Services and Taranga Services Pty Ltd as Respondents. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on March 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 21, 2010.
The Center appointed Isabel Davies as the sole panelist in this matter on April 29, 2010. 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.
Unless otherwise stated, the following information is derived from the Complaint. The Respondents did not file a Response, and therefore did not dispute the statements of fact set out in the Complaint. Accordingly, the Panel accepts the factual background set out in the Complaint.
The Complainant states that, since 1980, it has continuously used the trade mark AMERICAN APPAREL to market and sell its products. The Complainant is the proprietor of United States trade mark registration number 3048206 for AMERICAN APPAREL for clothing. The Complainant operates and maintains the website “www.americanapparel.net”. The Complainant has not authorised the Respondents to use its AMERICAN APPAREL trade mark. As at February 14, 2010, the Domain Name resolved to a website showing sponsored listings for retailers of clothing products. In one case the link appears to be to an online retailer offering both the Complainant's products and other clothing products. The other links all appear to be to websites of retailers offering for sale products that compete with the Complainant's products.
The Complainant makes the factual assertions set out above.
The Complainant asserts that this is a case of “typosquatting”. In connection with the first UDRP element (identity / confusing similarity) the Complainant asserts that in many UDRP cases, domain names featuring misspelled trade marks have been held to be confusingly similar to the trade marks. On this basis the Complainant asserts that the Respondents' manipulation of “a single letter” fails to make the Domain Name distinguishable from the Complainant's trade mark.
In connection with the second UDRP element (no rights or legitimate interests), the Complainant says that because the Domain Name resolved to a website offering competing products, it could not be said to engage in the bona fide offering of goods or services or to be “widely associated” with the Respondents. Citing Ticketmaster Corporation v. Iskra Service, WIPO Case No. D2002-0165, the Complainant asserted that the Respondents could not establish rights or legitimate interests in the Domain Name under any of the three particular circumstances set out at paragraph 4(c) of the Policy.
In connection with the third UDRP element (bad faith), the Complainant asserted, citing numerous UDRP cases, that there is a long history of UDRP panels accepting that typosquatting constitutes bad faith.
The Respondents did not reply to the Complainant's contentions.
The Respondents have not filed a Response. This does not mean that a decision should automatically be granted in favour of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. However, under paragraph 14(a) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of, or requirement under, the Rules, including the Respondents' failure to file a Response.
The Panel notes that although the Complaint is made in respect of the Domain Name, being <americanapperal.com>, the Complaint refers in paragraph 12(A) to the domain name <americanapperel.com> as the “disputed site”. In particular, the Complainant asserts that its domain name <americanapparel.net> “differs only in one letter from the disputed site americanapperel.com”. Later in the same paragraph, the Complainant refers to the Respondent's “manipulation of a single letter” of its mark. In fact, the Domain Name (other than the “.com” suffix) differs in two letters from the trade mark in which the Complainant asserts rights.
Paragraph 10(d) of the Rules provides that it is for the Panel to determine the admissibility, relevance, materiality and weight of the evidence before it. The Panel determines that the Complainant's reference to the domain name <americanapperel.com> was made in error and that on the basis of this initial error the Complainant made two further errors in referring to the Domain Name as differing by only one letter from the Complainant's domain name or trade mark. In reaching this conclusion, the Panel has given weight to the fact that both the initial Complaint and the Amended Complaint clearly state on their cover sheets that the disputed domain name is the Domain Name, <americanapperal.com>. This was also stated to be the domain name in dispute in all communications with the Respondent. The Panel has therefore proceeded on that basis. The Domain Name in fact differs by two letters from the Complainant's domain name and trade mark, but the Panel considers that nothing turns on this point and this has made no difference to the Panel's decision.
The Panel accepts the Complainant's uncontested assertions as to its rights in the trade mark AMERICAN APPAREL. The Complainant has been using the trade mark in connection with clothing for 30 years, and has had a registered trade mark for AMERICAN APPAREL for clothing since 2006. Accordingly, the Panel finds that the Complainant has rights in the trade mark.
It is generally accepted that the “.com” element of a domain name does not take away identity or confusing similarity; see, for example, Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. Leaving aside the “.com” element of the Domain Name, the Domain Name consists of the whole of the Complainant's trade mark with two minor misspellings. The Domain Name is therefore visually, phonetically and conceptually highly similar to the Complainant's trade mark. On the basis of the UDRP cases cited by the Complainant, the Panel finds that the Domain Name is confusingly similar to the trade mark.
The burden of showing that the Respondents have no rights or legitimate interests in the Domain Name lies with the Complainant. However, it is established that this could result in the impossible task of proving a negative, requiring information that is within the knowledge of the Respondents. The Complainant is therefore required only to establish a prima facie case that the Respondents have no rights or legitimate interests in the Domain Name. If the Respondents do not submit a response, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, among others, Croatia Airlines d.d., supra.
The Panel accepts the Complainant's uncontested assertion that it has not granted the Respondents any right to use its AMERICAN APPAREL trade mark. The AMERICAN APPAREL trade mark and its associated brand are widely known. There is no apparent purpose for the Respondents, or either of them, to have registered the Domain Name other than to divert potential customers of the Complainant who may misspell or mistype the Complainant's trade mark. This is particularly so in light of the sponsored links on the website to which the Domain Name until recently resolved, which are mainly for online retailers of products competing with the Complainant's products. The Panel therefore finds that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the Domain Name.
The Respondents have had the opportunity to attempt to refute the Complainant's prima facie case and to demonstrate such right or interest. They have not done so. The Panel infers from this that the Respondents have no such right or interest.
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any of which, if proved by a respondent to exist, will demonstrate a respondent's right or legitimate interest in a disputed domain name. These may be summarised as: (i) use of the domain name in connection with a bona fide offering of goods or services; (ii) that the respondent has been commonly known by the domain name; and (iii) that the respondent is making legitimate noncommercial or fair use of the domain name.
As at February 14, 2010 the website to which the Domain Name resolved featured sponsored links to products that compete with the Complainant's products, although the website at the time of writing this decision appears to have been taken down, presumably following receipt by the Respondents of the Complaint.
As noted in the Complaint, this manner of use was described in Ticketmaster Corporation, supra, as being “as a kind of ‘postal address' [which] links the visitor to other websites offering competitive products”. Such use “has repeatedly been held not to be a bona fide offering of goods or services”. The Panel therefore finds that the Domain Name has not been and is not being used by the Respondents, or either of them, in connection with a bona fide offering of goods or services.
There is no evidence to suggest that either of the Respondents is commonly known by the Domain Name.
It is to be assumed that, as is the usual practice, one or both of the Respondents received a fee whenever an Internet user clicked one of the sponsored links on the “www.americanapperal.com” website. It can only have done so with the intention of misleadingly diverting consumers for commercial gain.
Accordingly, the Panel is satisfied that the Respondents would be unable to demonstrate rights or legitimate interests in the Domain Name under the circumstances set out at paragraph 4(c) of the Policy.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, any of which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. These include, at paragraph 4(b)(iv), that by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark.
The Complainant cited numerous cases in which typosquatting has been held to be in bad faith. See, for example, Ticketmaster Corporation, supra: “‘typosquatting' (…) must be considered to be bad faith under the Policy”.
Given the high degree of similarity between the Domain Name and the Complainant's AMERICAN APPAREL trade mark, the fact that the Domain Name until recently resolved to a website showing sponsored links to retailers offering products that compete with the Complainant's products, and that, as previous UDRP panels have consistently held, typosquatting is to be generally regarded as being in bad faith, the Panel finds that the Domain Name was registered and has been used in bad faith.
As noted above, the Panel's independent enquires indicate that at the time of writing of this decision the Domain Name no longer resolves to a website. This may call into question whether the Domain Name “is being” used in bad faith as required by paragraph 4(a)(iii) of the Policy. However, the lack of active use of a domain name does not as such prevent a finding of bad faith; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel has already found that the Domain Name was being used in bad faith. The Complainant has a widely known trade mark. One of the Respondents, Taranga Services Pty Ltd, sought to conceal its identity by use of the services of the other Respondent, Moniker Privacy Services. The Respondents made no Response to the Complaint, from which the Panel infers that they are unable to refer to any legitimate, non-bad-faith current use of the Domain Name. In the circumstances, the Panel considers that it is impossible to conceive a good faith use of the Domain Name. The Panel therefore finds that the Domain Name is being used in bad faith.
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 <americanapperal.com> be transferred to the Complainant.
Dated: May 13, 2010