The Gap, Inc. v. Onyx Domains
Claim Number: FA1006001332471
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <athelta.com>, registered with 2030138 ONTARIO, INC. d/b/a NAMESBEYOND.COM d/b/a GOOD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 28, 2010.
On July 13, 2010, 2030138 ONTARIO, INC. d/b/a NAMESBEYOND.COM d/b/a GOOD confirmed by e-mail to the National Arbitration Forum that the <athelta.com> domain name is registered with 2030138 ONTARIO, INC. d/b/a NAMESBEYOND.COM d/b/a GOOD and that Respondent is the current registrant of the name. 2030138 ONTARIO, INC. d/b/a NAMESBEYOND.COM d/b/a GOOD verified that Respondent is bound by the 2030138 ONTARIO, INC. d/b/a NAMESBEYOND.COM d/b/a GOOD registration agreement and thereby has 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 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@athelta.com by e-mail. Also on July 19, 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 August 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <athelta.com>, is confusingly similar to Complainant’s ATHLETA mark.
2. Respondent has no rights to or legitimate interests in the <athelta.com> domain name.
3. Respondent registered and used the <athelta.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., uses its ATHLETA mark to offer women’s athletic apparel through its subsidiaries and licensees. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ATHLETA mark (e.g., Reg. No. 2,427,769 issued February 13, 2001).
Respondent, Onyx Domains, registered the <athelta.com> domain name September 24, 2004. The disputed domain name resolves to a website that features an advertisement hyperlink which 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 submitted sufficient proof to show that it has established rights in its ATHLETA mark under Policy ¶ 4(a)(i) through Complainant’s trademark registrations with the USPTO (e.g., Reg. No. 2,427,769 issued February 13, 2001). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); 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).”).
Complainant contends that Respondent’s <athelta.com>
domain name is confusingly similar to Complainant’s ATHLETA mark. The disputed domain name transposes the
letters “e” and “l” in Complainant’s mark and adds the generic top-level domain
(“gTLD”) “.com” to Complainant’s mark.
The Panel finds that the transposing of two letters coupled with the
addition of a gTLD fail to distinguish the disputed domain name from Complainant’s
mark and that the disputed domain name with its resolving website is confusingly
similar to Complainant’s protected mark.
See Google Inc.
v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to the complainant’s GOOGLE mark
and noting that “[t]he transposition of two letters does not create a distinct
mark capable of overcoming a claim of confusing similarity, as the result
reflects a very probable typographical error”); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678
(Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain
name was confusingly similar to the complainant’s DELTA mark); see also Jerry Damson, Inc. v.
Therefore, the Panel finds that Respondent’s <athelta.com> domain name is confusingly similar to Complainant’s ATHLETA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant has further alleged that Respondent does not have rights to or legitimate interests in the <athelta.com> domain name. When Complainant makes a prima facie case to support its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <athelta.com> domain name. However, the Panel still examines 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).
Respondent failed to respond or present any evidence and the Panel has found no evidence in the record that would support a finding that Respondent is commonly known by the <athelta.com> domain name. To the contrary, Complainant presented evidence that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent is not sponsored by or affiliated with Complainant and that Complainant has not authorized Respondent to use Complainant’s ATHLETA mark. Complainant also provides the WHOIS information, which lists the registrant of the disputed domain name as “Onyx Domains,” which the Panel finds is not similar to the <athelta.com> domain name. The Panel is persuaded by Complainant’s evidence and holds that Respondent is not commonly known by the <athelta.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s <athelta.com> domain name resolves to a website that contains an advertisement hyperlink that resolves to an unrelated third-party. Complainant alleges that Respondent receives click-through fees from the aforementioned hyperlink. The Panel finds that Respondent’s use of the confusingly similar disputed domain name for such a purpose does not constitute 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 <athelta.com> domain name under Policy ¶ 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Moreover, Respondent’s <athelta.com> domain
name contains a common misspelling of Complainant’s ATHLETA mark. In the disputed domain name, Respondent has
transposed the letters “e” and “l” in Complainant’s mark. The Panel finds that this constitutes
typosquatting and provides further evidence that Respondent lacks rights and legitimate
interests in the <athelta.com> domain name pursuant to Policy ¶
4(a)(ii). See Microsoft Corp. v.
Domain Registration
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent uses the <athelta.com> domain name
to resolve to a website featuring an advertisement hyperlink to an unrelated
third party’s website. Complainant
claims that Respondent likely receives click-through fees from this hyperlink
and the Panel agrees. Respondent is
attempting to profit each time an Internet user accesses the website resolving
from the confusingly similar disputed domain name and clicks on the
advertisement link. Internet users may
become confused as to Complainant’s association with the disputed domain name
and the resolving website due to Respondent’s use of a confusingly similar
disputed domain name. Therefore, the
Panel finds that Respondent is attempting to profit from Internet users’
confusion through Respondent’s use of the confusingly similar <athelta.com>
domain name. Such conduct supports findings that Respondent registered and used
the disputed domain name in bad faith 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 previously determined that Respondent’s <athelta.com> domain name is a typosquatted version of Complainant’s ATHLETA mark. The Panel finds further that Respondent’s typosquatting also is evidence that supports findings that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <athelta.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 30, 2010
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