The Gap, Inc. v. Jet Stream Enterprises Limited c/o Jet Stream
Claim Number: FA1006001330937
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oldnav.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2010.
On June 21, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <oldnav.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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@oldnav.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 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of a Written Notice, as defined in Rule 1. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <oldnav.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <oldnav.com> domain name.
3. Respondent registered and used the <oldnav.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., established Old Navy in 1994, a company which sells casual apparel and related products both in retail stores and online. Complainant owns multiple trademark registrations for the OLDNAVY.COM and related marks with the United States Patent and Trademark Office (“USPTO”) and the trademark offices of many countries/regions around the world, including the African Intellectual Property Office (“AIPO”), the Bahamas Industrial Property Office (“BIPO”), and the European Union Office of Harmonization for the Internal Market (“OHIM”):
Office Mark Reg. No. Date Issued
USPTO OLD NAVY CLOTHING CO. 1,931,339 Oct. 31, 1995;
USPTO OLD NAVY 2,006,872 Oct. 8, 1996;
USPTO OLD NAVY 2,055,347 Apr. 22, 1997;
USPTO OLD NAVY 2,414,675 Dec. 19, 2000;
USPTO OLDNAVY.COM 2,418,340 Jan. 2, 2001;
AIPO OLD NAVY 46,748 Apr. 10, 2002;
BIPO OLD NAVY 22,196 Nov. 17, 1999;
BIPO OLD NAVY 22,561 Mar. 22, 2000;
OHIM OLD NAVY CLOTHING CO. 27,193 Nov. 4, 1998;
OHIM OLD NAVY 422,147 Jan. 13, 1999;
OHIM OLD NAVY 27,227 Jan. 19, 1999;
OHIM OLD NAVY COLOR 1,260,561 Oct. 2, 2000;
OHIM OLD NAVY 1,097,930 Feb. 20, 2001;
OHIM OLD NAVY 2,271,518 Aug. 9, 2002;
OHIM OLD NAVY 2,643,435 July 21, 2005;
OHIM OLD NAVY 1,964,063 Aug. 16, 2005; and
OHIM OLD NAVY 4,481,123 Mar. 8, 2007.
Respondent, Jet Stream Enterprises Limited c/o Jet Stream, registered the <oldnav.com> domain name on November 9, 2005. The disputed domain name resolves to a webpage that is blank and not in active use.
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 owns multiple trademark registrations for the OLDNAVY.COM and related marks with the USPTO and the trademark offices of many countries/regions around the world, including the AIPO, the BIPO, and the OHIM. The Panel finds that such extensive evidence of Complainant’s trademark registrations of its OLD NAVY.COM and related marks suffices to show Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even if the mark is not registered in a country where Respondent lives or operates. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <oldnav.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark. The omission of the letter “y” in the disputed domain name is the singular difference between the mark and the disputed domain name. The Panel finds that a difference created by the omission of a single letter fails to distinguish the disputed domain name and prevent confusing similarity under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). Therefore, the Panel finds that Respondent’s <oldnav.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
When alleging that Respondent lacks rights and legitimate
interests in the disputed domain name, Policy ¶ 4(a)(ii)
requires that Complainant put forth a prima
facie against Respondent. In the
instant proceeding, the Panel finds Complainant has satisfied this obligation,
thereby transferring the burden to Respondent to demonstrate rights and
legitimate interests. The Respondent,
however, has failed to respond, signaling to the Panel that it lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”); 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.”). The Panel
elects, however, to consider the evidence presented in light of the Policy ¶
4(c) factors to make a complete determination on the issue of Respondent’s
rights and legitimate interests.
Complainant argues that Respondent is not commonly known by
the <oldnav.com> domain
name. Complainant further asserts that
Respondent is not affiliated with Complainant in any way and has not been
licensed or authorized to use Complainant’s OLDNAVY.COM mark. The Panel finds that the WHOIS information,
listing the registrant as “Jet Stream Enterprises Limited,” along with the lack
of evidence supporting a connection between Respondent and the disputed domain
name indicate that Respondent does not possess rights and legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac
Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to establish rights and
legitimate interests in the <emitmortgage.com> domain name as the
respondent was not authorized to register domain names featuring the
complainant’s mark and failed to submit evidence of that it is commonly known
by the disputed domain name); see
also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant contends that
Respondent is not making any active use of the <oldnav.com> domain name as it resolves to a blank page without
content. The Panel finds that
Respondent’s failure to make active use of the disputed domain name over four
years after its registration serves as evidence that Respondent is not making a
bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use according to Policy ¶ 4(c)(iii) and thus lacks rights
and legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see
also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the
respondent’s failure to use the disputed domain name for several years was 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)).
Complainant argues
that Respondent’s registration of the <oldnav.com>
domain name, which differs by only one letter from Complainant’s OLDNAVY.COM
mark, is clearly intended to capitalize on a common mistake: failing to enter the final letter of
Complainant’s “OLD NAVY” name when searching for Complainant’s online presence. The Panel finds that Respondent’s registration
of a common, unintentional misspelling of Complainant’s mark indicates
typosquatting and supports a finding of no rights and legitimate interests on
the part of Respondent according to Policy ¶ 4(a)(ii). See 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”); see also 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’”).
The Panel finds Policy ¶
4(a)(ii) has been satisfied.
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). 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 Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) f the Policy is not an exhaustive list of bad faith evidence).
Complainant contends that Respondent is not actively using
the <oldnav.com> domain name
since the disputed domain name resolves to a blank webpage. The Panel finds that failure to actively use
the disputed domain name evidences bad faith registration and use by Respondent
according to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v.
Meyers, FA 697818 (Nat. Arb. Forum
June 26, 2006) (holding that the non-use of a disputed domain name for several
years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); 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).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting by registering a disputed domain name comprised of a typographical error of Complainant’s mark. The Panel finds such typosquatting to be evidence in itself of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”),
The Panel finds 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 <oldnav.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 1, 2010
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