The clothing company Aeropostale has won what we believe is the first appeal of a Uniform Rapid Suspension (URS) proceeding.
Back in April a URS examiner Alan L. Limbury,denied the Complaint of Aeropostale Procurement Company on the domain name aeropostale.uno finding that “Complainant here submitted with its complaint copies of the certificates of registration of seven United States AEROPOSTALE trademarks, four of which are in the name R. H. Macy & Co., Inc., two of which are in the name Aeropostale West, Inc., and one of which is in the name Aeropostale, Inc. Complainant submitted no evidence of any relationship between any of those companies and the Complainant, Aeropostale Procurement Company, Inc Accordingly there is no evidence before the Examiner that the Complainant holds a valid national or regional registration for a mark to which the domain name is identical or confusingly similar.””
Aeropostale appealed the decision as opposed to filing a new case and this is as far as we know is the first formal appeal of a URS decision, although the decision is made without reference to the original decision.
In the appeal, Piotr Nowaczyk, Examiner, found that, the Complainant holds a valid registration for “AEROPOSTALE” trademarks that were register in the US Patent and Trademark Office under following numbers: 1354292, 1485368, 1487211, 1548372, 2680387, 3384078 and 3443836.
The Respondent apologized for registration aeropostale.uno and contends that he had not realized it infringes someone’s else trademark. The Respondent asserts that he perceived it as a business opportunity. He claims that the domain is not actively used in any form. Moreover, the Respondent admitted that he registered more domain names with gtld “.uno” and after receiving the Notice of Complaint he contacted the Registrar in order to cancel them.
The Domain Name, <aeropostale.uno> is identical to Complainant’s trademarks since it includes the exact wording of the registered trademarks. The Examiner finds that the Complainant met the standard sets out in 18.104.22.168. of the URS Procedure since it proved that it holds a valid national trademark registration. Further, the Complainant confirmed that the registered trademarks are in current use by presenting pictures of its goods produced under the AEROPOSTALE marks as well as screenshots of it website <aeropostal.com>.
The rule stemming from URS 22.214.171.124 (d) is satisfied since the Respondent admitted that he has registered the domain to take “an opportunity similar to when .com first came into existence” so purely for a reason of expected gain resulting from using the “AEROPOSTALE” mark. It is important that the Respondent could have easily known of the Complainant’s trademarks when registering aeropostale.uno.
The “AEROPOSATLE” marks were registered and used for many years before the domain name was created. Additionally, the Respondent has admitted that he registered more domain names with “.uno” gtld that infringe someone’s else rights. This also confirms bad faith of the Respondent.
Finally, the fact that the Respondent was unaware of consequences of his conduct does not exculpate him. In the light of above, the Respondent’s declaration about cancelling the domain was not taken into consideration because there were no evidences of such presented.
The Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence.”””