The Gap, Inc. v. PrivacyProtect.org c/o Domain Admin
Claim Number: FA1006001332394
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <banannarepublic.com>, registered with POWER BRAND CENTER CORP.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2010.
On July 6, 2010, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <banannarepublic.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the name. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. 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 16, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of August 5, 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
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2010, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed
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 "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 <banannarepublic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
2. Respondent does not have any rights or legitimate interests in the <banannarepublic.com> domain name.
3. Respondent registered and used the <banannarepublic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., sells clothing and clothing accessories under its BANANA REPUBLIC mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BANANA REPUBLIC mark (e.g., Reg. No. 1,347,849 issued July 9, 1985).
Respondent registered the <banannarepublic.com> domain name on July 18, 2001. The disputed domain name resolves to a website that contains a single hyperlink that resolves to an unrelated third-party website.
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 alleges that it has established rights in its
BANANA REPUBLIC mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,347,849 issued July 9,
1985). Previous panels have concluded
that a complainant may establish rights in a mark by registering the mark with
a trademark authority and that Policy ¶ 4(a)(i) does
not require a complainant to register a mark within the country a respondent
resides. See Intel
Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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 Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant contends that Respondent’s <banannarepublic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark. Complainant asserts that the disputed domain name is a common misspelling of Complainant’s mark by adding the letter “n” to the mark. Complainant further alleges that Respondent simply removed the space separating the terms of the mark and added the generic top-level domain (“gTLD”) “.com” to the mark. Past panels have found that the removal of a space from a complainant’s mark coupled with the addition of a letter and a generic top-level domain name fail to sufficiently distinguish a disputed domain name from a complainant’s mark. See 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 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that Respondent’s <banannarepublic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the <banannarepublic.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known by the <banannarepublic.com> domain name. Complainant argues that the WHOIS information indicates that Respondent is known as an entity other than the disputed domain name and the Panel agrees. Moreover, Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that Complainant has not given Respondent permission to use Complainant’s BANANA REPUBLIC mark in a domain name. Respondent has failed to respond to these assertions. Prior panels have determined that a respondent is not commonly known by a disputed domain name if the WHOIS information does not indicate that the respondent is commonly known by the domain name, the complainant asserts that the respondent is not authorized to use the complainant’s mark, and the respondent fails to respond to the proceedings. 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). Thus, the Panel finds that Respondent is not commonly known by the <banannarepublic.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <banannarepublic.com>
domain name to resolve to a website that contains a single third-party
hyperlink that resolves to a website unrelated to Complainant. Complainant contends that Respondent receives
click-through fees from this hyperlink.
Past panels have found a respondent’s use of a disputed domain name to
feature hyperlinks to unrelated third-parties is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use. See Constellation Wines
Complainant contends that Respondent’s use of the <banannarepublic.com>
domain name constitutes typosquatting.
Complainant argues that Respondent has simply utilized a common
misspelling of Complainant’s mark in its disputed domain names. Previous panels have held that the use of a
common misspelling of a complainant’s mark in a domain name is evidence of
typosquatting, which is not evidence of legitimate rights and interests in a
disputed domain name. See Microsoft
Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s <banannarepublic.com>
domain name resolves to a website containing a hyperlink to an unrelated
third-party website. Complainant asserts
that Respondent receives a click-through fee each time an Internet user clicks
on the hyperlink. Complainant claims
that Respondent registered the confusingly similar disputed domain name in
order to create confusion as to Complainant’s sponsorship of the disputed
domain name and resolving website.
Complainant argues that Respondent is then attempting to profit from the
increased traffic to Respondent’s website due to Internet users’
confusion. Past panels have held that a
respondent’s use of a disputed domain name to attempt to profit from Internet
users’ confusion is not a bona fide offering
of goods or services pursuant to Policy ¶ 4(b)(iv). See 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); see
also The Ass’n of Junior Leagues Int’l
Inc. v. This Domain Name My Be For
The Panel has already determined that Respondent’s <banannarepublic.com> domain name is a typosquatted version of Complainant’s BANANA REPUBLIC mark. The Panel further concludes that Respondent’s use of a typosquatted version of Complainant’s mark is evidence of bad faith registration and use pursuant to 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under 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 <banannarepublic.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 16, 2010
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