The Gap, Inc. v. Forsyte Corporation
Claim Number: FA1006001332406
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwbananarepublic.com>, registered with REBEL.COM 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2010.
On June 29, 2010, REBEL.COM CORP. confirmed by e-mail to the National Arbitration Forum that the <wwwbananarepublic.com> domain name is registered with REBEL.COM CORP. and that Respondent is the current registrant of the names. REBEL.COM CORP. has verified that Respondent is bound by the REBEL.COM 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 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@wwwbananarepublic.com. Also on July 1, 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 26, 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 "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 <wwwbananarepublic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
2. Respondent does not have any rights or legitimate interests in the <wwwbananarepublic.com> domain name.
3. Respondent registered and used the <wwwbananarepublic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., owns several trademark registrations for its BANANA REPUBLIC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,347,849 issued July 9, 1985) and the Bahamas’ Registrar General’s Office (“BRGO”) (Reg. No. 22197 issued November 17, 1999) in connection with clothing, clothing accessories, retail store services, and online store services.
Respondent, Forsyte Corporation, registered the disputed domain name on August 29, 2002. The disputed domain fails to resolve to an active 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 asserts rights in its BANANA REPUBLIC mark based
on its registrations of the mark with the USPTO (e.g., Reg. No. 1,347,849 issued July 9, 1985) and the (“BGRO”) (Reg.
No. 22197 issued November 17, 1999). The
Panel finds that Complainant’s registrations of its BANANA REPUBLIC mark with
governmental trademark authorities is evidence of Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <wwwbananarepublic.com>
domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark. Respondent’s disputed domain name contains
the entirety of Complainant’s mark after removing the space separating the
terms of the mark and merely adds the “www” prefix and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that these additions are not sufficient to avoid a finding of confusing
similarity. 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 Bank of Am. Corp. v.
InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the
respondent’s domain name <wwwbankofamerica.com> is confusingly similar to
the complainant’s registered trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet”); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22,
2003) (finding the prefix “www” followed by the trademark with no period
separating them did not distinguish the mark and was confusingly similar). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <wwwbananarepublic.com>
domain name is confusingly similar
to Complainant’s BANANA REPUBLIC mark.
The Panel finds that
Policy ¶ 4(a)(i) is satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the <wwwbananarepublic.com> domain name. Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case in support of its contentions before the burden will shift to Respondent to prove it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case in support of its contentions based on the arguments contained in the Complaint. Respondent has failed to respond to these proceedings and has thus provided no evidence that it has any rights 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). In the interest of fairness, the Panel will examine the record to determine whether Respondent has developed rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information for the disputed domain name indicates that the registrant is “Forsyte Corporation.” This information, coupled with Complainant’s assertion that it has not authorized or licensed Respondent to use its BANANA REPUBLIC mark in any way, leads the Panel to conclude that Respondent is not commonly known by the <wwwbananarepublic.com> domain name. 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 alleges that Respondent’s disputed domain name fails to resolve to an active website. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent is making use of a common typing error of Internet users by eliminating the period between the “www” prefix and the disputed domain name. The Panel finds that Respondent’s behavior amounts to typosquatting and is evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).
The Panel finds that Policy ¶ 4(a)(ii)
is satisfied.
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that it is not 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.”).
Complainant argues that Respondent’s disputed domain name resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use of the <wwwbananarepublic.com> domain name is evidence of Respondent’s bad faith registration and use pursuant 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 Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
As established previously, Respondent has engaged in the practice of typosquatting which the Panel finds is itself evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
The Panel finds that Policy ¶ 4(a)(iii)
is 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 <wwwbananarepublic.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 6, 2010
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