The Gap, Inc. v. Hanying Li
Claim Number: FA1006001331209
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oldavy.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2010.
On June 24, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <oldavy.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 July 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@oldavy.com. Also on July 2, 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 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant, through its subsidiary companies Old Navy and Old Navy Inc., holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OLD NAVY mark (including that identified as registry no. 1,931,339, issued October 31, 1995).
Complainant uses its OLD NAVY trademark in connection with the marketing of clothing, clothing accessories, retail store services and online retail store services.
Complainant is not affiliated with Respondent in any way, and Complainant has not given Respondent permission to use its OLD NAVY mark in a domain name.
Respondent registered the <oldavy.com> domain name on June 9, 2000.
The disputed domain name resolves to a website that displays links to the websites of Complainant’s business competitors.
Respondent profits from this use of the contested domain name through the receipt of pay-per-click fees.
Respondent has a
history of registering domain names that infringe upon the trademark rights of
others and has been ordered by previous UDRP panels to transfer the disputed
domain names to the respective complainants.
Respondent’s <oldavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark.
Respondent does not have any rights to or legitimate interests in the <oldavy.com> domain name.
Respondent registered and uses the <oldavy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent 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 domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the OLD NAVY trademark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, complainant has met the
requirements of Policy ¶ 4(a)(i).
See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Complainant alleges that Respondent’s <oldavy.com> domain name is confusingly similar to the OLD NAVY trademark. In examining this issue, we need not dwell on the presence of the generic top-level domain (“gTLD”) “.com” in Respondent’s domain name because the addition of a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶ 4(a)(i) analysis. See 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); 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).
Similarly, panels have found that deleting spaces between
words in a complainant’s mark does not distinguish a disputed domain name from
a mark. See Bond & Co. Jewelers, Inc. v.
Likewise, panels have found that misspelling a mark by omitting a letter from a term in the mark does not avoid a finding of confusing similarity. See, for example, Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name is confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i” from the mark in forming the offending domain name); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that a respondent’s <hacrs.com> domain name is confusingly similar to a complainant’s HACRES mark because it merely omitted the letter “e” from the mark and added the generic top-level domain “.com”).
Because we agree with these assessments, the Panel finds that Respondent’s domain name <oldavy.com> is confusingly similar to Complainant’s OLD NAVY trademark pursuant to Policy ¶ 4(a)(i).
Under this head of the Policy, Complainant must first establish prima facie that Respondent does not have rights to or legitimate interests in the <oldavy.com> domain name. The burden then shifts to Respondent to show that it has rights to or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It
is well established that, once a complainant has made out a prima facie case in
support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Respondent’s failure to submit a Response demonstrates a
lack of rights and legitimate interests in the contested domain name. 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.
Nonetheless, we will review the record before us, in light
of the considerations set out in Policy ¶ 4(c), to determine whether there is
in it any basis for concluding that Respondent possesses rights to or
legitimate interests in the contested domain name which are cognizable under
the Policy.
We begin by observing that Complainant claims that it is not affiliated with Respondent in any way and has not given Respondent permission to use its OLD NAVY mark in a domain name. Respondent does not deny these assertions. Further, the WHOIS information for the disputed domain name lists the registrant only as “Hanying Li”, which does not resemble the contested domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the <oldavy.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that 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 a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the contested domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also note that Complainant alleges, without objection
from Respondent, that Respondent’s <oldavy.com> domain name
resolves to a website featuring links to the websites of Complainant’s business
competitors. Complainant further claims,
again without objection from Respondent, that Respondent profits from this use
through the receipt of pay-per-click fees.
In the circumstances here presented, we must conclude that Respondent’s
use of a domain name which is confusingly similar to Complainant’s trademark in
order to receive referral fees does not qualify as 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 Disney
Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding
that the operation of a pay-per-click website at a contested domain name was
not 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 Wal-Mart
Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s
use of domain names confusingly similar to a complainant’s WAL-MART mark to
divert Internet users seeking that complainant’s goods and services to websites
competing with the business of that complainant did not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the domains under Policy ¶
4(c)(iii)).
Finally, we cannot fail to notice that Respondent’s <oldavy.com> domain
name incorporates a common misspelling of Complainant’s OLD NAVY trademark,
which amounts to typo-squatting by Respondent in the formation of the contested
domain. Typo-squatting provides further
evidence that Respondent lacks rights to or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4 (a)(ii). See Microsoft Corp. v.
Domain Registration
typosquatting, which
provides additional evidence that respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii).
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 a complainant's LTD COMMODITIES mark and that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is undisputed on this record that Respondent has been
subject to numerous UDRP proceedings in which disputed domain names were
ordered to be transferred from Respondent to various complainants. See, for example, Wells Fargo & Co. v. Hanying Li, FA 271917 (Nat. Arb. Forum
Aug. 21, 2009); see also WeddingChannel.com
Inc. v. Hanying Li: This domain 4 sale, FA 363955 (Nat. Arb. Forum Dec. 29,
2004). We conclude, therefore,
that Respondent has engaged in a pattern of bad faith registration and use of
domain names, which constitutes evidence that the domain name here under
examination was registered and is being used by Respondent in bad faith within
the meaning of Policy ¶ 4(b)(ii). See Arai Helmet Am., Inc. v. Goldmark,
D2004-1028 (WIPO Jan. 22, 2005 (finding that
“Respondent has registered the disputed domain name, <aria.com>, to
prevent Complainant from registering it” and taking notice of another Policy
proceeding against the respondent to find that “this is part of a pattern of
such registrations”); see
also Westcoast Contempo Fashions Ltd. v. Manila Indus.,
Inc., FA 814312
(Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use of a
contested domain name pursuant to Policy ¶ 4(b)(ii) where a respondent had been
the subject of numerous UDRP proceedings in which panels ordered the transfer
of disputed domain names containing the trademarks of various complainants).
Respondent uses the <oldavy.com> domain name to redirect Internet users seeking Complainant’s business to its website, which displays links to the websites of third-parties that compete with the business of Complainant. This use of the domain disrupts Complainant’s business and constitutes evidence of registration and use of the domain in 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 contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a commercial search engine with links to the websites of a complainant’s business competitors).
In addition, Respondent uses the contested domain name to
attract Internet users to its website, and from that site to the websites of
Complainant’s commercial competitors, so that it can profit from the receipt of
pay-per-click fees. This it does by
employing a domain name which is confusingly similar to Complainant’s trademark,
thus to create confusion among Internet users as to the possibility that
Complainant is the source or sponsor of, or is affiliated with or endorses,
Respondent’s website. This use of the
disputed domain name provides further evidence of Respondent’s registration and
use of it in bad faith pursuant to Policy ¶ 4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name which is confusingly similar to a complainant’s mark by using it to offer links to third-party websites that featured services similar to those offered by that complainant).
Finally, Respondent has engaged in typo-squatting, which amounts to bad faith registration and use of the contested domain name under Policy ¶ 4(a)(iii). See 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).” See also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):
Typosquatting
… is the intentional misspelling of words with intent to intercept and siphon
off traffic from its intended destination, by preying on Internauts who make
common typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <oldavy.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 29, 2010
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