THE GAP, INC v. Center for Ban on Drugs
Claim Number: FA1205001445907
Complainant is THE GAP, INC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Center for Ban on Drugs (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <odnavy.com>, registered with DNC Holdings, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2012; the National Arbitration Forum received payment on May 25, 2012.
On May 29, 2012, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <odnavy.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2012 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@odnavy.com. Also on May 29, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <odnavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark.
2. Respondent does not have any rights or legitimate interests in the <odnavy.com> domain name.
3. Respondent registered or used the <odnavy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant registered the OLD NAVY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,006,872 registered October 8, 1996);
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."
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.
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.”).
Complainant claims to have established its rights in the OLD NAVY mark by registering the mark with the USPTO (e.g., Reg. No. 2,006,872 registered October 8, 1996). Complainant submits multiple printouts from the USPTO website to verify its claim, which the Panel notes identifies Complainant as the owner of registrations issued by the USPTO. Therefore, the Panel concludes that Complainant established its rights in the OLD NAVY mark under Policy ¶ 4(a)(i) by registering it with the USPTO. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant also claims that Respondent’s <odnavy.com> domain name is identical or confusingly similar to Complainant’s OLD NAVY mark. The Panel notes that the disputed domain name includes nearly the entire mark, merely removing the “l” from the mark and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of a single letter and the addition of a gTLD do not successfully remove Respondent’s disputed domain name from the realm of confusingly similar under Policy ¶ 4(a)(i) when compared to Complainant’s OLD NAVY mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i” and added the gTLD “.com.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has not been commonly known by the disputed domain name. Complainant states that Respondent is not sponsored by or affiliated with Complainant in any way. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Center for Ban on Drugs.” Based upon the evidence available, the Panel concludes that Respondent is not commonly known by the disputed domain name under 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).
Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that the disputed domain name resolves to a website offering links to third parties, some of which compete with Complainant in the clothing industry. Complainant submits a screenshot of the resolving website, which the Panel notes identifies links to “Womens Clothing,” “Online Shopping,” and “Childrens Clothing” as the content provided by Respondent from its website. Thus, the Panel determines that Respondent is not making 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 under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant contends that Respondent engaged in typosquatting when it registered a typographic error of the OLD NAVY mark to form the disputed domain name. Complainant states that the disputed domain name merely omits the letter “l” from the OLD NAVY mark. The Panel finds that Respondent engaged in typosquatting by registering the disputed domain name in its current form, and the Panel concludes from that finding that Respondent lacks rights and legitimate interests in the <odnavy.com> domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Complainant claims that Respondent has engaged in a pattern of infringing domain name registrations. Complainant states that Respondent has been an adverse party in multiple UDRP proceedings. See Caterpillar Inc. v. Center for Ban on Drugs, FA 661437 (Nat. Arb. Forum May 2, 2006); see also Vanguard Trademark Holdings USA LLC v. Center for Ban on Drugs, FA 1333299 (Nat. Arb. Forum August 15, 2010); see also Liberty Mut. Ins. Co. v. Center for Ban on Drugs, FA 956407 (Nat. Arb. Forum May 22, 2007). Complainant also states that Respondent is the registrant of multiple other typosquatted domain names involving the marks of third parties. The Panel finds that Respondent has established a pattern of registering trademark infringing domain names, and the Panel concludes that Respondent’s pattern indicates bad faith registration and use under Policy ¶ 4(b)(ii) in the present action. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant also claims that Respondent uses the disputed domain name for Respondent’s own commercial gain. Complainant states that Respondent resolves the disputed domain name to a website offering links to third-party businesses, many of which compete with Complainant. Complainant also states that Respondent is taking advantage of Complainant’s well-known mark, in the form a domain name, for its own commercial gain. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv), and the Panel concludes that Respondent is attempting to commercially gain off of the confusion created by the disputed domain name and the resolving website. See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant contends that Respondent engaged in typosquatting when it registered the disputed domain name using a typographic error of the OLD NAVY mark. Complainant states that the disputed domain name merely removes the letter “l” from the OLD NAVY mark. The Panel finds that Respondent engaged in typosquatting by registering the disputed domain name in its present form, and the Panel concludes from that finding that Respondent registered and uses 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))
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <odnavy.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 5, 2012
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