The Gap, Inc. v. Huanglitech c/o Domain Admin
Claim Number: FA1006001332814
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oldnnavy.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2010.
On June 30, 2010, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <oldnnavy.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, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 21, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@oldnnavy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 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." 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 <oldnnavy.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark.
2. Respondent does not have any rights or legitimate interests in the <oldnnavy.com> domain name.
3. Respondent registered and used the <oldnnavy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., markets casual apparel and related products under its OLD NAVY and OLDNAVY.COM marks. Complainant sells its causal apparel and related products in mall-based stores and online at a website resolving from its <oldnavy.com> domain name. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its OLD NAVY (e.g., Reg. No. 2,414,675 issued December 19, 2000) and its OLDNAVY.COM marks (e.g., Reg. No. 2,418,340 issued January 2, 2001).
Respondent, Huanglitech c/o Domain Admin, registered the <oldnnavy.com> domain name on November 19, 2005. The disputed domain name 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.
The panels in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), found that a trademark registration with the USPTO was sufficient to establish rights in the respective marks under Policy ¶ 4(a)(i). The Panel in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), further held that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence. Complainant has registered its OLD NAVY (e.g., Reg. No. 2,414,675 issued December 19, 2000) and its OLDNAVY.COM marks (e.g., Reg. No. 2,418,340 issued January 2, 2001) with the USPTO. Therefore, the Panel determines that Complainant has established rights in its OLD NAVY and OLDNAVY.COM marks pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <oldnnavy.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark. The disputed domain name simply adds the letter “n” to Complainant’s OLDNAVY.COM mark. The Panel holds that the addition of a letter to Complainant’s mark does not adequately differentiate the disputed domain name from Complainant’s mark. In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the Panel held that “[t]he mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).” Similar to the case at hand, the Panel in Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) found that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark. Thus, the Panel concludes that Respondent’s <oldnnavy.com> domain name is confusingly similar to Complainant’s OLDNAVY.COM mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <oldnnavy.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a 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 <oldnnavy.com> 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Previous panels have concluded that a respondent is not commonly known by a disputed domain name when no similarity exists between the disputed domain name and the WHOIS information for the registrant of the disputed domain name. See 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). Past panels have further held that a respondent’s failure to respond to the complaint, coupled with a complainant’s assertion that the respondent was not authorized to use the complainant’s mark, is evidence that a respondent is not commonly known by a disputed domain name. 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). The WHOIS information for the <oldnnavy.com> domain name identifies the domain name registrant as “Huanglitech c/o Domain Admin,” which, the Panel determines, is not similar to the <oldnnavy.com> domain name. Moreover, Complainant asserts that Respondent was not authorized to use Complainant’s OLD NAVY and OLDNAVY.COM marks. Respondent has failed to respond to Complainant’s assertions and has failed to present any evidence that Respondent is commonly known by the disputed domain name. Based on the evidence in the record and the precedent set by previous panels, the Panel determines that Respondent is not commonly known by the <oldnnavy.com> domain name under Policy ¶ 4(c)(ii).
Respondent’s <oldnnavy.com> domain name fails to resolve to an active website. The Panel determines that Respondent’s failure to make an active 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See 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)); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
Respondent’s <oldnnavy.com> domain name
contains Complainant’s entire OLDNAVY.COM mark and simply adds the letter
“n.” In Microsoft
Corp. v. Domain Registration
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
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.”).
Respondent’s <oldnnavy.com> domain name fails
to resolve to an active website. The
Panel finds Respondent’s failure to make an active use of the confusingly
similar disputed domain name constitutes bad faith registration and use under
Policy ¶ 4(a)(iii).
See Pirelli
& C. S.p.A. v.
As previously noted, Respondent’s use of the confusingly similar <oldnnavy.com> domain name constitutes typosquatting. The Panel concludes Respondent’s typosquatting use of the <oldnnavy.com> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); 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 the elements of Policy ¶ 4(a)(iii) have been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oldnnavy.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 2, 2010
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