The Gap, Inc. v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1208001457981
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oidnavy.com> and <oldnavys.com>, registered with Moniker Online Services, Llc.
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 August 14, 2012; the National Arbitration Forum received payment on August 14, 2012.
On August 14, 2012, Moniker Online Services, Llc confirmed by e-mail to the National Arbitration Forum that the <oidnavy.com> and <oldnavys.com> domain names are registered with Moniker Online Services, Llc and that Respondent is the current registrant of the names. Moniker Online Services, Llc has verified that Respondent is bound by the Moniker Online Services, Llc 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 August 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@oidnavy.com and postmaster@oldnavys.com. Also on August 20, 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 September 12, 2012, 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 (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:
Respondent’s <oidnavy.com> and <oldnavys.com> domain names, the domain names at issue, is confusingly similar to Complainant’s OLD NAVY mark.
Respondent does not have any rights or legitimate interests in the domain names at issue.
Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Old
Navy was established as a brand name in1994 by Complainant. Since its inception
in 1994, Complainant has used the OLD NAVY mark to market casual apparel and
related products sold in its Old Navy stores and online. Consumers recognize
the OLD NAVY brand as the source of quality on-trend apparel and accessories available
at a good value.
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). Complainant also registered the OLD NAVY mark with the Intellectual
Property Office of New Zealand (“IPONZ”) (e.g., Reg. No. 13,438
registered October 10, 1994). Respondent’s <oidnavy.com> and
<oldnavys.com> domain names are confusingly similar to Complainant’s
OLD NAVY mark and are classic examples of typosquatting. Respondent has not
been commonly known by the disputed domain names and Complainant has not given
Respondent permission to use Complainant’s mark in a domain name. Respondent
resolves the disputed domain names to websites offering links to third-party
companies, many of which compete with Complainant. Respondent registered and
uses domain names that include the marks of unrelated, third-party businesses
and has been a party to many previous adverse UDRP decisions establishing a
pattern of infringing domain name registration. Respondent’s disputed domain
name disrupts Complainant’s business and misleads Internet users to
Respondent’s own website for commercial gain.
Respondent failed to file a Response in this matter. Respondent registered the disputed domain names as early as July 7, 2004.
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 registered the OLD NAVY mark with the USPTO (e.g., Reg. No. 2,006,872 registered October 8, 1996) and the IPONZ (e.g., Reg. No. 13,438 registered October 10, 1994). Accordingly, Complainant established rights in the OLD NAVY mark under Policy ¶ 4(a)(i) by registering the mark with trademark authorities throughout the world. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s <oidnavy.com> and <oldnavys.com> domain names are confusingly similar to Complainant’s OLD NAVY mark. The disputed domain names both add the generic top-level domain (“gTLD”) “.com” and remove the space between the terms of Complainant’s mark. The disputed domain names separately either add a letter “s” or change the letter “l” in the mark to the letter “i.” Respondent’s disputed domain names are confusingly similar to Complainant’s OLD NAVY mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 has not given Respondent permission to use Complainant’s mark in a domain name. The WHOIS information identifies the registrant as “Domain Admin / Taranga Services Pty Ltd.” Thus, 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).
Respondent is not using the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent resolves the disputed domain names to websites offering links to third-party companies, many of which compete with Complainant. Complainant has submitted as evidence a printout from the resolving website, which depicts a website offering links, some of which identify other clothing outlets as the ultimate destination, as well as photographs of women modeling clothing. Therefore, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and uses domain names that include the marks of unrelated, third-party businesses and has been a party to many previous adverse UDRP decisions establishing a pattern of infringing domain name registration. See adidas AG and adidas America, Inc. v. Taranga Services Pty Ltd c/o Domain Admin, FA 1329851 (Nat. Arb. Forum July 15, 2010); see also Vanguard Trademark Holdings USA LLC v. Taranga Services Pty Ltd c/o Domain Admin, FA 1305932 (Nat. Arb. Forum March 23, 2010). The named Respondent is a common privacy shield used by domain name registrants to hide the actual registrant of a given domain name. Therefore, the Panel concludes that Respondent did not register or use the disputed domain name in bad faith under Policy ¶ 4(b)(ii). Further, Respondent has developed a pattern of infringing domain name registration indicating bad faith registration and use under Policy ¶ 4(b)(ii) in the present dispute. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Respondent’s disputed domain name disrupts Complainant’s business. Respondent resolves the disputed domain names to websites offering links to third-party companies, many of which compete with Complainant. Internet users may arrive at the resolving website, click on one of the links offered, and then be diverted to a competing clothing website, where the diverted user may then purchase goods from a competitor rather than Complainant. This use disrupts Complainant’s business and, as a result, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent misleads Internet users to Respondent’s own website for commercial gain. Respondent resolves the disputed domain names to websites offering links to third-party companies, many of which compete with Complainant. Respondent is trying to confuse Internet users into using the resolving website and then gaining commercially from that confusion. The Panel determines that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Policy ¶ 4(a)(iii) has 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 <oidnavy.com> and <oldnavys.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 14, 2012
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