The Gap, Inc. v. jeonggon seo
Claim Number: FA1306001504399
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is jeonggon seo (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldmavy.com> registered with Hangang Systems, Inc. dba doregi.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2013; the National Arbitration Forum received payment on June 12, 2013. The Complaint was submitted in both English and Korean.
On June 12, 2013, Hangang Systems, Inc. dba doregi.com confirmed by e-mail to the National Arbitration Forum that the <oldmavy.com> domain name is registered with Hangang Systems, Inc. dba doregi.com and that Respondent is the current registrant of the name. Hangang Systems, Inc. dba doregi.com has verified that Respondent is bound by the Hangang Systems, Inc. dba doregi.com 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 June 25, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of July 15, 2013 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@oldmavy.com. Also on June 25, 2013, the Korean language 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 July 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant made the following contentions.
i. Complainant owns the OLD NAVY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,006,872, registered October 8, 1996).
ii. Complainant also owns the OLD NAVY mark through its trademark registrations with many foreign jurisdictions, such as the Korean Intellectual Property Office (“KIPO”) (e.g., Reg. No. 4,129,831, registered December 27, 1995).
iii. Complainant is a leading global clothing and clothing accessories retailer and operates brands such as Baby Gap, Banana Republic, and Old Navy.
iv. Complainant uses the OLD NAVY mark through it subsidiary companies Old Navy (Apparel) LLC and Old Navy (ITM) Inc., for retail store services relating to clothing, shoes, accessories, home products, and related products. Similarly, Complainant uses <oldnavy.com> to serve customers online.
v. Complainant has made substantial contributions to the promotion of the mark since its inception in 1994, such that it is famous throughout the world.
i. Policy ¶ 4(a)(i)
1. The <oldmavy.com> domain name is nearly identical and confusingly similar to the OLD NAVY mark as the disputed domain differs from the mark merely by replacing a single letter in the domain name, and including the generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent has not been commonly known by the disputed domain name as demonstrated by the WHOIS record. Further, Complainant has not licensed or otherwise authorized Respondent’s use of the mark in a domain name.
2. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent uses the <oldmavy.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s bad faith is shown by Respondent’s holdings of registrations on other domain names that appear to be straightforward examples of typosquatting, but are not presently in dispute.
2. Respondent uses the disputed domain name to display links promoting products that compete with Complainant. The links divert potential customers away from Complainant to competitors, which disrupt Complainant’s business.
3. Respondent attracts and misleads consumers for its own profit. Respondent uses the disputed domain in connection with click-through websites, and provides links to services and products offered by Complainant.
4. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
1. Complainant is a United States company that is a leading global clothing and clothing accessories retailer and operates brands such as Baby Gap, Banana Republic, and Old Navy.
2. Complainant owns the OLD NAVY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,006,872, registered October 8, 1996).
Complainant also owns the OLD NAVY mark through its trademark registrations with many foreign jurisdictions, such as the Korean Intellectual Property Office (“KIPO”) (e.g., Reg. No. 4,129,831, registered December 27, 1995).
3. Respondent registered the disputed domain name on January 20, 2003. Respondent uses the <oldmavy.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims to own the OLD NAVY mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,006,872, registered October 8, 1996). Further, Complainant claims to own the OLD NAVY mark through its trademark registrations with many foreign jurisdictions, such as the KIPO (e.g., Reg. No. 4,129,831, registered December 27, 1995). The Panel finds that Complainant’s USPTO and KIPO registrations establish its right in the OLD NAVY mark under Policy ¶ 4(a)(i), especially when Respondent presents itself as a resident of the Republic of Korea. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OLD NAVY marks referred to above. Complainant argues that the domain name is nearly identical and confusingly similar to Complainant’s mark as <oldmavy.com> differs from OLD NAVY merely by replacing the “n” with an “m,” and including the gTLD “.com.” The Panel notes that the domain name also eliminates the space between the two-word OLD NAVY mark. In Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) the panel found 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”. Further, previous panels have determined that the elimination of the space between a two-word mark and the addition of a gTLD are insufficient to differentiate the disputed domain name from the mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <oldmavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark pursuant to Policy ¶ 4(a)(i) as replacing the “n” with an “m,” including the gTLD “.com,” and eliminating the space between the OLD NAVY mark, does not sufficiently differentiate the disputed domain from the mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OLD NAVY trademark and used it in its domain name by simply substituting the letter “m” for the letter “n” when composing the domain name , thus giving the false impression that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant;
(b) Respondent uses the <oldmavy.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that Respondent has not been commonly known by the disputed domain name as demonstrated by the WHOIS record. The Panel notes that the WHOIS information identifies the domain registrant as “jeonggon seo.” Further, Complainant contends it has not licensed or otherwise authorized Respondent’s use of the mark in a domain name. The Panel notes that Respondent did not submit a Response to refute Complainant’s contentions. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Complainant argues that Respondent is not using the disputed domain name to provide either a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant contends that Respondent uses the <oldmavy.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant presumes that Respondent receives pay-per-click fees from the linked websites. The Panel notes that in Exhibit H, Complainant includes a screenshot of the websites reachable through the dispute domain, which includes links to JCPenney and Nordstrom. The Panel finds that Respondent’s efforts to divert users to its own website featuring links to Complainant’s competitors, likely for commercial gain, 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 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”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent uses the disputed domain name to display links promoting products that compete with Complainant. Complainant further asserts that the links divert potential customers away from Complainant to competitors, which in turn disrupts Complainant’s business. Complainant argues that such disruption is evidence of Respondent’s bad faith. The Panel notes that in Exhibit H, Complainant provides screenshots of websites reachable through the <oldmavy.com> domain name, which includes links to JCPenney and Nordstrom. Previous panels have found evidence of bad faith through commercial disruption where a respondent provides links to complainant’s competitors through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith disruption under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Secondly, Complainant further argues that Respondent attracts and misleads consumers for its own profit, showing bad faith. Complainant contends that Respondent uses the disputed domain name in connection with click-through websites, and provides links to services and products offered by Complainant. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the resolving page provides links to Complainant’s competitors, including JCPenney and Nordstrom, and Respondent likely receives click-through fees by intentionally misleading internet users into associating Complainant with the domain name. See 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).”); Complainant’s Ex. H (evidencing the presence of competing hyperlinks on the disputed domain name’s website).
Thirdly, Complainant argues that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Panels have consistently held that typosquatting is a practice that takes advantage of common and basic typographical errors, and is therefore motivated by bad faith. 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).”). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii) as Respondent diverts users who misspell Complainant’s mark away from their intended destination to this disputed domain name.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s OLD NAVY trademarks and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oldmavy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 19, 2013
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