The Gap, Inc. v. Domain Admin
Claim Number: FA1006001330865
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bananarepulbic.com>, <oldnany.com>, and <olnnavy.com>, registered with MONIKER ONLINE SERVICES, INC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2010.
On June 22, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <bananarepulbic.com>, <oldnany.com>, and <olnnavy.com> domain names are registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the names. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, INC. 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 June 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bananarepulbic.com, postmaster@oldnany.com, and postmaster@olnnavy.com. Also on June 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <bananarepulbic.com> is confusingly similar to Complainant’s BANANA REPUBLIC mark.
Respondent’s <oldnany.com> and <olnnavy.com> domain names are confusingly similar to Complainant’s OLD NAVY mark.
2. Respondent does not have any rights or legitimate interests in the <bananarepulbic.com>, <oldnany.com>, and <olnnavy.com> domain names.
3. Respondent registered and used the <bananarepulbic.com>, <oldnany.com>, and <olnnavy.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., through its subsidiary companies, owns and uses its OLD NAVY and BANANA REPUBLIC marks in connection with clothing, clothing accessories, retail store services and online retail store services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OLD NAVY mark (e.g., 1,931,339 issued October 31, 1995) and its BANANA REPUBLIC mark (e.g., Reg. No. 1,347,849 issued July 9, 1985).
Respondent registered the disputed domain names no earlier than November 19, 2005. The disputed domain names resolve to websites featuring pay-per-click links to Complainant and its competitors.
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.
Complainant asserts rights in its OLD NAVY and BANANA
REPUBLIC marks based on its registrations of the marks with the USPTO. The Panel finds that Complainant’s
registrations with the USPTO of its OLD NAVY mark (e.g., Reg. No. 1,931,339 issued October 31, 1995) and its BANANA
REPUBLIC mark (e.g., Reg. No. 1,347,849
issued July 9, 1985) is sufficient evidence of Complainant’s rights in the mark
pursuant to Policy ¶ 4(a)(i). See Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the
[complainant’s] mark is registered with the USPTO, [the] complainant has met
the requirements of Policy ¶ 4(a)(i).”); see
also
Complainant asserts that Respondent’s <bananarepulbic.com>
domain name is confusingly similar
to its BANANA REPUBLIC mark.
Respondent’s domain name merely transposes the letters “b” and “l” in
Complainant’s mark, deletes the space between the terms, and adds the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that such alterations do not avoid a finding of confusing
similarity for the purpose of Policy ¶ 4(a)(i).
See Google Inc. v. Jon G., FA 106084 (Nat.
Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar
to the complainant’s GOOGLE mark and noting that “[t]he transposition of two
letters does not create a distinct mark capable of overcoming a claim of confusing
similarity, as the result reflects a very probable typographical error”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650
(Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between
terms and the addition of a gTLD do not establish distinctiveness from the
complainant’s mark under Policy ¶ 4(a)(i)).
Therefore, the Panel finds that Respondent’s <bananarepulbic.com>
is confusingly similar to
Complainant’s BANANA REPUBLIC mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts
that Respondent’s <oldnany.com> and <olnnavy.com> domain
names are confusingly similar to Complainant’s OLD NAVY mark. Respondent’s disputed domain names merely
replace a letter in Complainant’s mark with the letter “n,” delete the space
between the terms of Complainant’s mark, and add the gTLD “.com.” The Panel finds that these changes are
insufficient to distinguish Respondent’s disputed domain names from
Complainant’s mark. See Belkin Components
v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also U.S. News & World Report, Inc. v.
Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of
punctuation and the space between the words of Complainant’s mark, as well as
the addition of a gTLD does not sufficiently distinguish the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the
generic top-level domain “.com” is insufficient to differentiate a disputed
domain name from a mark). Therefore,
pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <oldnany.com> and <olnnavy.com> domain names
are confusingly similar to Complainant’s OLD NAVY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to the requirements of Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case in support of its contention that Respondent lacks rights and
legitimate interests in the disputed domain names. The Panel finds that Complainant has
established a sufficient prima facie
case in this instance. Complainant’s
satisfaction of its burden effectively shifts the burden to Respondent to prove
that it does have rights or legitimate interests in the disputed domain names. Respondent has failed to submit a Response to
these proceeding from which the Panel infers that Respondent does in fact lack
rights and legitimate interests in the disputed domain names. See
AOL LLC v. Gerberg, FA
780200 (Nat.
Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden
shifts to the respondent to show that it does have rights or legitimate
interest in the subject domain names.”); see
also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure
to respond not only results in its failure to meet its burden, but also will be
viewed as evidence itself that Respondent lacks rights and legitimate interests
in the disputed domain name.”). However,
the Panel will examine the record to determine whether Respondent has developed
rights and legitimate interests in the disputed domain name under Policy ¶
4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information indicates that the registrant of the disputed domain names is “Domain Admin,” which Complainant argues suggests that Respondent is known as an entity other than the marks associated with Complainant. Complainant further asserts that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s marks. Complainant indicates that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Based on the evidence in the record, the Panel finds that Complainant is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is using the disputed domain names to redirect unsuspecting Internet users to websites featuring links to third-party commercial websites of Complainant and its competitors. Complainant presumes that Respondent is the recipient of click-through fees from the displayed links. The Panel finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent’s registration of domain names that incorporate common misspellings of Complainant’s marks, including the transposition of letters and the replacement of a single letter in a mark is evidence of typosquatting. The Panel further finds that typosquatting is evidence of Respondent’s lack of rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the disputed domain names to display links to third-party websites in competition with Complainant is evidence of Respondent’s bad faith. By displaying links to competitors, Respondent is causing a disruption of Complainant’s clothing business as Internet users seeking Complainant’s products may instead purchase the same or similar products from a competitor of Complainant. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent, by redirecting unsuspecting Internet users to websites featuring links to third-party websites, is improperly trying to increase traffic to the websites by using the fame of Complainant’s marks. Complainant presumes that Respondent profits from the receipt of click-through fees resulting from the links displayed on the websites resolving from the disputed domain names. The Panel agrees and finds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attempting to attract Internet users to the disputed domain names for Respondent’s commercial gain. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
As established previously, Respondent has engaged in the practice of typosquatting based on its registration and use of the disputed domain names which incorporate common misspellings of Complainant’s marks. The Panel finds that typosquatting is itself evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bananarepulbic.com>, <oldnany.com>, and <olnnavy.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 28, 2010
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