The Gap, Inc. v. Gu Bei
Claim Number: FA1006001332391
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pldnavy.com>,
registered with
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2010. The Complaint was submitted in both Chinese and English.
On July 1, 2010, Hebei Guoji Maoyi (
On July 13, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 2, 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@pldnavy.com. Also on July 13, 2010, the Chinese language 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 August 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pldnavy.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <pldnavy.com> domain name.
3. Respondent registered and used the <pldnavy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., established its subsidiary Old Navy in 1994. Complainant, through its Old Navy subsidiary, sells casual apparel and related products in stores and online. Complainant owns numerous trademark registrations for the OLDNAVY.COM and related OLD NAVY marks with the United States Patent and Trademark Office (“USPTO”) and with the trademark authorities of other countries/regions around the world, including the Canadian Intellectual Property Office (“CIPO”), the Chinese State Intellectual Property Office (”SIPO”), and the European Union Office of Harmonization for the Internal Market (“OHIM”):
Mark Reg. No. Date Issued
USPTO
OLD NAVY CLOTHING CO. 1,931,339 Oct. 31, 1995;
OLD NAVY 2,006,872 Oct. 8, 1996;
OLD NAVY 2,055,347 Apr. 22, 1997;
OLD NAVY 2,414,675 Dec, 19, 2000;
OLDNAVY.COM 2,418,340 Jan. 2, 2001;
CIPO
OLD NAVY 547,667 July 4, 2001;
OLD NAVY 570,394 Nov. 7, 2002;
OLD NAVY 604,814 Mar. 10, 2004;
SIPO
OLD NAVY 879,432 Oct. 7, 1996;
OLD NAVY 1,152,165 Feb. 21, 1998;
OLD NAVY 1,410,337 June 21, 2000;
OHIM
OLD NAVY 422,147 Jan. 13, 1999;
OLD NAVY 2,271,518 Aug. 9, 2002; and
OLD NAVY 2,643,435 July 21, 2005.
Respondent, Gu Bei, registered the <pldnavy.com> domain name on May 24, 2007. The disputed domain name resolves to a website displaying no content other than pay-per-click links to websites unrelated to Complainant.
Respondent has previously been the respondent in at least three other prior UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See, e.g., TBC Retail Group, Inc. v. Gu Bei, FA 1305344 (Nat. Arb. Forum Mar. 19, 2010); Hewlett-Packard Dev. Co., L.P. v. Gu Bei, FA 1292980 (Nat. Arb. Forum Dec. 22, 2009); Disney Enters., Inc. v. Gu Bei, FA 1284140 (Nat. Arb. Forum Oct. 31, 2009).
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 numerous trademark registrations for the OLDNAVY.COM and related OLD NAVY marks with the USPTO and with the trademark authorities of other countries/regions around the world, including the CIPO, the SIPO, and the OHIM:
Mark Reg. No. Date Issued
USPTO
OLD NAVY CLOTHING CO. 1,931,339 Oct. 31, 1995;
OLD NAVY 2,006,872 Oct. 8, 1996;
OLD NAVY 2,055,347 Apr. 22, 1997;
OLD NAVY 2,414,675 Dec, 19, 2000;
OLDNAVY.COM 2,418,340 Jan. 2, 2001;
CIPO
OLD NAVY 547,667 July 4, 2001;
OLD NAVY 570,394 Nov. 7, 2002;
OLD NAVY 604,814 Mar. 10, 2004;
SIPO
OLD NAVY 879,432 Oct. 7, 1996;
OLD NAVY 1,152,165 Feb. 21, 1998;
OLD NAVY 1,410,337 June 21, 2000;
OHIM
OLD NAVY 422,147 Jan. 13, 1999;
OLD NAVY 2,271,518 Aug. 9, 2002; and
OLD NAVY 2,643,435 July 21, 2005.
The Panel finds that Complainant’s extensive trademark
registrations in the
Complainant argues that Respondent’s <pldnavy.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark because the disputed domain name results from the typographical error replacing the letter “o” with the letter “p.” The Panel finds that a difference of only one letter between the disputed domain name and Complainant’s mark, especially one resulting from a common typographical error, does not prevent confusing similarity under Policy ¶ 4(a)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark). Therefore, the Panel finds that Respondent’s <pldnavy.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
In keeping with the requirements of Policy ¶ 4(a)(ii), Complainant supported its allegations of Respondent’s lack of rights and legitimate interests with an adequate prima facie case. Respondent now bears the burden of demonstrating its rights and legitimate interests. In light of Respondent’s failure to respond to the Complaint, however, the Panel finds that Respondent has defaulted on its burden and has not shown rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Compañia de Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (finding that because Respondent defaulted and did not demonstrate that it had any rights or legitimate interests, the “Panel assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent’s actual or most likely knowing of the famous or well known marks MOVICOM and BELL SOUTH”). The Panel has decided to consider the evidence in the record, however, in light of the Policy ¶ 4(c) factors in an effort to make a complete determination on Respondent’s rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent has further demonstrated that it does not possess rights and legitimate interests in the <pldnavy.com> domain name because Respondent has not proven that it is commonly known by the disputed domain name, is not sponsored or affiliated with Complainant, and has not been given permission to use Complainant’s mark in the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “pldnavy.com.” While this information facially appears to indicate that Respondent is commonly known by the <pldnavy.com> domain name, the Panel finds that without other evidence supporting a relationship between Respondent and the disputed domain name, the WHOIS information alone is insufficient to show that Respondent is commonly known by the disputed domain name or establish rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
Complainant asserts that Respondent’s <pldnavy.com> domain name redirects Internet users to a web page showing only pay-per-click links with titles referring to “Old Navy” or “Navy” but actually resolving to websites completely unrelated to Complainant. Thus, the Panel finds that Respondent’s use of Complainant’s mark to resolve to a website with no relation to Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant contends that Respondent registered the <pldnavy.com> domain name because it
results from a common typographical error which replaces the letter “o” with
the letter “p,” a letter adjacent to the letter “o” on the QWERTY
keyboard. Complainant alleges that
Respondent’s registration of such a domain name was meant to take advantage of
common Internet user mistakes and thus constitutes typosquatting. The Panel finds that such typosquatting
indicates Respondent’s lack of rights and legitimate interests in the disputed
domain name according to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
Complainant alleges that Respondent has previously been the
respondent in at least three other prior UDRP proceedings in which the disputed
domain names were transferred to the respective complainants. See,
e.g., TBC Retail Group, Inc. v. Gu Bei, FA
1305344 (Nat. Arb. Forum Mar. 19, 2010); Hewlett-Packard
Dev. Co., L.P. v. Gu Bei, FA 1292980 (Nat. Arb.
Forum Dec. 22, 2009); Disney Enters.,
Inc. v. Gu Bei, FA 1284140 (Nat. Arb. Forum Oct.
31, 2009). Complainant argues that these
prior UDRP proceedings serve as evidence that Respondent has a pattern of
registering domain names which appropriate the registered marks of third-parties. The Panel finds that Respondent’s pattern of
activity therefore shows bad faith registration and use pursuant to Policy ¶
4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Complainant contends that the only content displayed on the website resolving from Respondent’s <pldnavy.com> domain name is a listing of pay-per-click links to unrelated third-party websites. Complainant asserts that maintaining these links generates profit for Respondent when Respondent’s wrongly appropriated disputed domain name attracts Internet users and confuses them as to Respondent’s affiliation with Complainant. The Panel finds that using the disputed domain name to mislead Internet users and profit from their confusion reveals bad faith registration and use according to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through its registration of the confusingly similar <pldnavy.com> domain name. The Panel finds that Respondent’s typosquatting is further evidence of its 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 <pldnavy.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 16, 2010
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