The Gap, Inc. v. A Domain Serve
Claim Number: FA0911001296325
Complainant is The Gap, Inc. (“Complainant”), represented by Alias Encore, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <oldnavey.com> and <oldnayv.com>, registered with Dotregistrar.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2009.
On November 30, 2009, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <oldnavey.com> and <oldnayv.com> domain names are registered with Dotregistrar and that Respondent is the current registrant of the names. Dotregistrar has verified that Respondent is bound by the Dotregistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 21, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@oldnavey.com and postmaster@oldnayv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <oldnavey.com> and <oldnayv.com> domain names are confusingly similar to Complainant’s OLD NAVY mark.
2. Respondent does not have any rights or legitimate interests in the <oldnavey.com> and <oldnayv.com> domain names.
3. Respondent registered and used the <oldnavey.com> and <oldnayv.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc.,
is a clothing retailer that promotes its products under the OLD NAVY mark. Complainant registered the OLD NAVY mark with
the United States Patent and Trademark Office (“USPTO”) on October 17, 1995
(Reg. No. 1,928,001). Complainant has
used the OLD NAVY mark continuously in commerce since at least as early as 1994,
and now operates over 1,000 stores in the
Respondent, A Domain Serve, registered the <oldnayv.com> domain name on September 3, 2002, and registered the <oldnavey.com> domain name on March 13, 2004. The disputed domain names each resolve to a website that has no content and is not currently being actively used.
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."
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.”).
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.
The Panel finds that Complainant has established rights in
the OLD NAVY mark for the purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO ((Reg. No. 1,928,001 issued October 17, 1995). See
AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding
that where the complainant had submitted evidence of its registration with the
USPTO, “such evidence establishes complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).”); see also Bloomberg
L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that
the complainant had established rights in the BLOOMBERG mark through registration
with the United States Patent and Trademark Office).
Complainant contends that Respondent’s <oldnavey.com> domain name is confusingly similar to its OLD NAVY mark. The <oldnavey.com> domain name differs from Complainant’s mark in three ways: (1) the letter “e” has been added, which does not affect the phonetic similarity between the mark and the disputed domain name; (2) the space has been removed from the mark; and (3) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that neither the deletion of a space nor the addition of a single letter sufficiently distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i), especially where the resulting domain name is still phonetically similar to the mark. The Panel also finds that the addition of a gTLD also does not reduce the likelihood of confusion between the domain name and the mark, because every domain name must contain a top-level domain. Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s <oldnavey.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant also contends that
Respondent’s <oldnayv.com> domain name is confusingly similar to its OLD NAVY
mark. The <oldnayv.com>
domain name differs from Complainant’s mark in three ways: (1) the letters “v”
and “y” have been inverted; (2) the space has been removed from the mark; and
(3) the generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the inversion of two
letters in a mark does not sufficiently distinguish a domain name from an
incorporated mark for the purposes of Policy ¶ 4(a)(i). As above, the Panel
also finds that the deletion of a space does not reduce the likelihood of
confusion between the domain name and the mark, nor does the addition of a
gTLD, because every domain name must contain a top-level domain. Therefore, the Panel finds that these changes
do not minimize or eliminate the resulting likelihood of confusion, and so
Respondent’s <oldnayv.com> domain name is confusingly similar to Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb.
Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was
confusingly similar to the complainant’s DELTA mark);
see also Classic Metal Roofs, FA 724554,
supra; see
also Trip Network, FA 914943, supra.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has not responded to the Complaint in this case. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the disputed
domain names nor has it ever been the owner or licensee of the OLD NAVY mark.
The WHOIS records for the disputed domain names list Respondent as “A Domain Serve,” and Respondent has failed to
show any evidence contrary to Complainant’s contentions. Therefore, the Panel finds that Respondent is
not commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See
Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding
that the respondent was not commonly known by the <mobilitytrans.com>
domain name because it was doing business as “Mobility Connections”); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
No active use is currently being made of the disputed domain names. The Panel finds that Respondent’s failure to make active use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
In addition, Complainant contends Respondent’s use of the
disputed domain names, which are common misspellings of Complainant’s OLD NAVY
mark, constitutes typosquatting. The Panel finds that Respondent’s use of
the disputed domain names to redirect Internet users seeking Complainant’s
clothing business website is further evidence that Respondent has failed to
establish rights or legitimate interests in the disputed domain names pursuant
to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel concludes that the scenarios listed under Policy ¶ 4(b) are not exclusive, and that it may consider additional circumstances in determining whether or not Respondent registered and is using the disputed domain names in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
The disputed domain names are not currently being actively used; the resolving website for each disputed domain name displays a blank page. Accordingly, the Panel finds this failure to make active use of the disputed domain names is evidence that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Furthermore, Respondent has engaged in typosquatting through the use of the disputed domain names, which are common misspellings of Complainant’s OLD NAVY mark. Therefore, the Panel finds Respondent’s practice of typosquatting also constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oldnavey.com> and <oldnayv.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 11, 2010
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