WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aéropostale Procurement Company, Inc. v. Cesar Moncada
Case No. D2015-1537
1. The Parties
Complainant is Aéropostale Procurement Company, Inc. of New York, New York, United States of America ("United States") represented by Katten Muchin Rosenman LLP, United States.
Respondent is Cesar Moncada of Fort Lauderdale, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <aero.clothing> is registered with 101domain, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 27, 2015. On August 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2015, the Registrar transmitted by email to the Center its verification response.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 24, 2015.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 6, 2015. 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.
Respondent transmitted informal correspondence to the Center by emails dated October 13 and October 16, 2015. The Center transmitted this correspondence to the Panel. Respondent's late correspondence did not provide factual evidence relevant to the proceeding, and the Panel does not address it further.
4. Factual Background
Complainant is the owner of multiple registrations for the word trademark AERO, and stylized design trademarks AERO, on the Principal Register of the United States Patent and Trademark Office (USPTO), including word trademark registration number 4299932, registration dated March 12, 2013, in international classes (ICs) 14, 18 and 25, covering, inter alia, jewelry, carrying bags and various clothing items, and stylized word trademark registration number 2911335, registration dated December 14, 2004, in IC 25, covering children's clothing, as further specified. Complainant has provided evidence of registration at the USPTO for a total of nine AERO or AERO-formative marks.
Complainant is a designer, manufacturer and retailer of clothing and accessories operating over 800 retail stores in the United States, Canada and Puerto Rico under the AEROPOSTALE trademark. Complainant markets and sells AERO branded clothing at these retail outlets, as well as through an online presence, for example at "www.aeropostale.com". Complainant prominently displays AERO-branded clothing and accessories on its main commercial website, and also operates a blog entitled "This is Aero" at "www.thisisaero.com". Complainant maintains a substantial social media presence through which it advertises under the AERO trademark.
According to the Registrar's verification, the disputed domain name was registered to Respondent on November 7, 2014.
Respondent has used the disputed domain name to post the term "aero.clothing" in stylized block lowercase letters at the address identified by the disputed domain name. There is no evidence of other use of the disputed domain name by Respondent on the record of this proceeding.
Complainant entered AERO trademark registration number 4299932 with the ICANN Trademark Clearinghouse on November 7, 2013. Accordingly, at the time Respondent sought registration of the disputed domain name, the Registrar was obligated to notify Respondent of the trademark registration owned by Complainant. Respondent was obligated to acknowledge receipt of that notice, representing that "to the best of your knowledge, your registration and use of the requested domain name will not infringe on the trademark rights listed below" (i.e. Complainant's trademark, as above).
Complainant received notice of Respondent's registration of the disputed domain name from the Trademark Clearinghouse, and promptly thereafter (on November 13, 2014) transmitted by email a cease and desist and transfer demand to Respondent. Respondent did not reply. On January 14, 2015, Complainant transmitted a follow-up email to Respondent, to which Respondent did not reply.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant asserts ownership of rights in the trademark AERO as evidenced by registration at the USPTO and use in commerce in the United States and elsewhere.
Complainant argues that the disputed domain name is confusingly similar to the AERO trademark as it "is identical to and incorporates in its entirety Complainant's AERO mark, along with the new gTLD most relevant to Complainant's industry." Complainant contends that Respondent registered the disputed domain name intentionally to take advantage of Internet user confusion based on association with Complainant's famous trademark.
Complainant contends that Respondent has not taken any steps that might establish rights or legitimate interests in the disputed domain name. According to Complainant: (1) Respondent's failure to publish any content on the website associated with the disputed domain name indicates that Respondent does not intend to use it in connection with a bona fide offering of goods or services; (2) Respondent has not been personally identified, or commonly known, in whole or in part by Complainant's trademark; (3) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because the only content on Respondent's website is the disputed domain name, and (4) Complainant has not authorized Respondent to use its trademark.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent had notice of Complainant's rights in its AERO trademark at least through the Trademark Clearinghouse mechanism; (2) Complainant's trademark is famous, and Respondent must have been aware of the trademark when it registered the disputed domain name; (3) Complainant's trademark registrations at the USPTO put Respondent on constructive notice of its trademark rights; (4) although Respondent has not made active use of the disputed domain name in connection with a website, there is substantial precedent under the UDRP (citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) that under certain circumstances "passive holding" of a disputed domain name may evidence bad faith. Complainant contends that Respondent's passive holding of the disputed domain name in this proceeding evidences bad faith because: (a) Respondent has failed to publish any content; (b) Respondent had actual and constructive notice of Complainant's famous trademark; (c) Complainant has an extensive Internet presence making use of its AERO trademark; (d) Internet users are likely to be confused as to Complainant's sponsorship of the website operated under the disputed domain name; (e) Respondent does not have any rights or legitimate interest in the disputed domain name; (f) Respondent failed to respond to Complainant's multiple cease-and-desist and transfer demands, and; (g) "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate".
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Respondent did not reply to email notification. The express courier delivery service engaged by the Center reported that the Written Notice of the commencement of the proceeding was successfully delivered to the address identified in the record of registration of the disputed domain name. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark AERO, including through multiple registrations at the USPTO and by use in commerce in the United States at retail outlets and on commercial websites (see Factual Background supra). Respondent has not contested Complainant's evidence of trademark rights. The Panel determines that Complainant has rights in the trademark AERO.
The disputed domain name directly incorporates Complainant's AERO trademark, and combines that with the gTLD "clothing". Complainant uses its trademark principally as an identifier on clothing. Internet users viewing <aero.clothing> are likely to associate that trademark-gTLD combination with Complainant's branded clothing. The Panel determines that the disputed domain name is confusingly similar to Complainant's AERO trademark.
The Panel determines that Complainant has rights in the AERO trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"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 noncommercial 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)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant's prima facie showing of lack of rights or legitimate interests.
Respondent's registration and limited use of the disputed domain name (i.e. reproducing the disputed domain name on a webpage) does not on its face manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith." Those are: "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name"; (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The disputed domain name appears intended to cause Internet user confusion with Complainant's trademark that is widely known in connection with advertising and sale of clothing. Respondent was virtually certain to have been aware of Complainant's rights in its trademark when it registered the disputed domain name. Respondent has not made any use of the disputed domain name that evidences rights or legitimate interests.
Paragraph 4(b) of the Policy refers to circumstances evidencing registration and use of a domain name in bad faith, and those circumstances include those indicating that a respondent registered a disputed domain name primarily for the purpose of selling or otherwise transferring the registration to a complainant who is owner of a trademark, or its competitor.
The Panel does not consider that there is "no conceivable use" of the disputed domain name that might at least theoretically establish rights or legitimate interests on the part of Respondent. But, under circumstances such as those present here, namely, Respondent registering the well-known clothing brand, AERO, in combination with the ".clothing"- gTLD, it is not readily evident what such a legitimate use might be.
Respondent has failed to respond to the Complaint and to suggest any plausible grounds for its registration of the disputed domain name. In light of the well-known nature of Complainant's trademark as an identifier for clothing, the Panel considers the balance of probabilities to tip strongly in favor of a determination that Respondent registered and is using the disputed domain name to sell it to Complainant, or to a third-party competitor of Complainant, for a value in excess of Respondent's out-of-pocket costs directly related to it.
Particularly in view of Respondent's failure to provide any explanation of its action, or inaction, the Panel relies on the balance of probabilities in making its determination, finding that Complainant registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aero.clothing> be transferred to the Complainant.
Frederick M. Abbott
Date: October 16, 2015