The Gap, Inc. v. Shu Lin Co c/o shu Lin
Claim Number: FA1006001332804
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oldhavy.com>, registered with ABOVE.COM PTY LTD.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2010.
On June 30, 2010, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <oldhavy.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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@oldhavy.com by e-mail. 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 James A. Carmody, Esq., 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 <oldhavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark.
2. Respondent does not have any rights or legitimate interests in the <oldhavy.com> domain name.
3. Respondent registered and used the <oldhavy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap Inc., owns and operates clothing and
accessory retail stores under the OLD NAVY mark. Complainant began operating OLD NAVY stores
in 1994 and currently has more than 1,000 located throughout the
Respondent, Shu Lin Co c/o shu Lin, registered the <oldhavy.com> domain name on February 13, 2008. Respondent’s disputed domain name resolves to a website that displays various third-party links and advertisements including links to Complainant’s official <oldnavy.com> website and to the websites of Complainant’s competitors.
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.
The Panel finds that Complainant has established rights in its OLD NAVY mark under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO (e.g., Reg. No. 2,006,872 issued October 8, 1996). Further, the Panel finds that Complainant does not have to own a trademark registration in Respondent’s country of residence in order to establish rights in its mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that Respondent’s <oldhavy.com> domain name contains a misspelled version of Complainant’s mark by removing the space between the terms of the mark and replacing the letter “n” with the letter “h.” Complainant argues that such a change to its OLD NAVY mark is not sufficient to render the domain name distinct from its mark. Further, Complainant argues that the addition of a generic top-level domain (“gTLD”) such as “.com” is irrelevant when considering confusing similarity under Policy ¶ 4(a)(i). The Panel agrees and finds that Respondent’s <oldhavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <oldhavy.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden shifts to the Respondent to show it does have rights and legitimate interests in the disputed domain name. 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 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.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <oldhavy.com> 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.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will review the evidence on record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complaint argues that Respondent is neither commonly known by the <oldhavy.com> domain name, nor has Complainant given Respondent permission to use Complainant’s OLD NAVY mark in a corresponding domain name. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and there is no further evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Complainant alleges that Respondent’s <oldhavy.com>
domain name resolves to a website that displays third-party links to various
competing and unrelated websites and businesses as well as including a link to
Complainant’s official <oldnavy.com> website. Complainant argues that Respondent receives
click-through fees from the websites advertised and linked-to on Respondent’s
website, and that such use is 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). The Panel finds that Respondent’s use of the <oldhavy.com>
domain name to display various hyperlinks to competing and unrelated websites
as well as a link to Complainant’s official website is not a use in connection
with 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA
949608 (Nat. Arb. Forum May 18, 2007) (“Respondent
is using the <skycaddy.com> domain name to display a list of
hyperlinks, some of which advertise Complainant and its competitors’
products. The Panel finds that this use
of the disputed domain name does not constitute 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 Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent 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).”).
Complainant argues that
Respondent’s registration and use of the <oldhavy.com>
domain name is further evidence that Respondent lacks
rights and legitimate interests in the domain name. Complainant contends that by using an easily
misspelled version of Complainant’s mark in the domain name that Respondent has
typosquatted on Complainant’s rights in the OLD NAVY mark. The Panel agrees and finds that Respondent’s
registration and use of a misspelled version of Complainant’s mark is
typosquatting, and as such is further evidence that Respondent lacks rights and
legitimate interests in the <oldhavy.com> domain name under
Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <oldhavy.com> domain name resolves to a website that contains a series of third-party hyperlinks to competing and unrelated websites. Respondent is diverting Internet users who mistakenly type “Old Havy” rather than Complainant’s OLD NAVY to commercial websites, some of which compete directly with Complainant. The Panel finds that Respondent has registered and is using the <oldhavy.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Further, Complainant contends that Respondent receives
compensation in the form of click-through and affiliate fees from the
businesses that are advertised and linked-to on Respondent’s website. Complainant argues that Respondent is
attempting to attract Internet users to its <oldhavy.com> domain
name for commercial gain and that such use is evidence of bad faith under
Policy ¶ 4(b)(iv).
The Panel agrees and finds that Respondent’s registration and use of the
<oldhavy.com> domain name was made in bad faith pursuant to Policy
¶ 4(b)(iv) where Respondent is redirecting Internet
users who are seeking Complainant’s products to various competing and unrelated
websites for commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Univ. of Houston Sys. v. Salvia Corp., FA
637920 (Nat. Arb. Forum Mar. 21, 2006)
(“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).”).
Lastly, Complainant
contends that Respondent’s registration and use of the <oldhavy.com>
domain name containing a misspelled
version of Complainant’s mark is further evidence of Respondent’s bad
faith. Complainant argues that
typosquatting has been found to constitute bad faith by previous UDRP
panels. Therefore, the Panel finds that
Respondent’s registration and use of the <oldhavy.com>
domain name is further evidence of Respondent’s bad faith registration and use
under Policy ¶ 4(a)(iii). See
Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘a likelihood
of confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s web site or location’. . .
through Respondent’s persistent practice of ‘typosquatting’”); see also 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).
The Panel finds that 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 <oldhavy.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 27, 2010
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