The Gap, Inc. v. MM / M Morgan
Claim Number: FA1306001504617
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is MM / M Morgan (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldnvavy.com> registered with ENOM, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2013; the National Arbitration Forum received payment on June 13, 2013.
On June 13, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <oldnvavy.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 June 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@oldnvavy.com. Also on June 13, 2013, 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 July 9, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
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 owns the OLD NAVY mark through its trademark registrations with many foreign jurisdictions, such as the Canadian Intellectual Property Office (“CIPO”)(e.g., Reg. No. 547,667, registered July 4, 2001). Complainant also has registered trademarks for OLDNAVY.COM (e.g. U.S. Reg. No. 2,418,340).
Complainant is a leading global clothing and clothing accessories retailer and operates brands such as Baby Gap, Banana Republic, and Old Navy. 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. Complainant has made substantial contributions to the promotion of the mark, such that it is famous throughout the world.
The <oldnvavy.com> domain name is nearly identical and confusingly similar to Complainant’s OLD NAVY mark as it uses the mark in its entirety with the mere addition of a single letter. The disputed domain name is a classic example of typosquatting.
Respondent is not commonly known by the <oldnvavy.com> domain name. Further, Complainant has not given Respondent permission to use the OLD NAVY mark in any way. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The disputed domain name <oldnvavy.com> directs users to a website featuring generic links to third-party websites, some of which compete directly with Complainant’s business. Presumably, Respondent receives pay-per-click fees from the linked websites.
Respondent is a recalcitrant, serial cybersquatter and typosquatter. Respondent holds registrations to other domain names that appear to be classic examples of typosquatting, though are not directly involved in the present Complaint. 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 and disrupts Complainant’s business. Respondent attracts and misleads consumers for profit. Respondent uses the disputed domain in connection with click-through websites, and provides links to services and products offered by Complainant. Respondent had actual knowledge of Complainant’s rights in the OLD NAVY mark at the time Respondent registered the disputed domain name. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
Respondent registered <oldnvavy.com> on October 20, 2005.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns registered trademarks for OLD NAVY and OLDNAVY.COM in the United States and elsewhere throughout the world.
Respondent was once a member of Complainant’s affiliate program but was never authorized to use Complainant’s trademarks in a domain name.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in OLD NAVY and OLDNAVY.COM.
Respondent’s at-issue domain name addresses a website that displays links promoting products that compete with Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registrations, CIPO registrations, and numerous other international registrations establish Complainant’s right in the OLD NAVY mark as well as the OLDNAVY.COM mark under Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
In forming the at-issue domain name a single letter “v” is inserted into the OLD NAVY mark’s second term, the space between the terms OLD and NAVY deleted, and the top level domain name “.com” appended thereto. The addition of a second “v” to the mark, the addition of a generic top-level domain, and the deletion of the space between OLD and NAVY does not materially differentiate the at-issue domain name from Complainant’s the OLD NAVY mark for the purposes of Policy ¶ 4(a)(i). Likewise, the domain name closely apes Complainant’s OLDNAVY.COM trademark, varying only by the additional letter “v.” Therefore, the Panel finds that under the Policy Respondent’s <oldnvavy.com> domain name is confusingly similar to both Complainant’s OLD NAVY and OLDNAVY.COM trademarks. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also 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).”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “MM / M MORGAN ()” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The confusingly similar <oldnvavy.com> domain name directs users to a website featuring generic links to third-party websites, some of which compete directly with Complainant’s business. Respondent likely receives revenue when such links are clicked on. Respondent’s use of a confusingly similar domain name to divert users to its website for commercial gain is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i),nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances -as well as other circumstance- are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Complainant cites past UDRP decisions that resulted in findings of bad faith against Respondent and subsequent domain name transfers away from Respondent. See AOL Inc. v. Mike Morgan a/k/a MM a/k/a M Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010); see also Shoedazzle.com, Inc. v. Mike Morgan, FA 1462200 (Nat. Arb. Forum Oct. 19, 2012). Complainant’s thereby shows that Respondent is a serial cybersquatter and typosquatter. Respondent’s past pattern of activities suggests that it acted in bad faith with regard to the instant proceeding. 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).”).
Additionally, the links displayed on the Respondent’s <oldnvavy.com> website divert potential customers away from Complainant to its competitors and thereby disrupts Complainant’s business. The websites that are reachable through the disputed domain name include, but are not limited to, <www.target.com> and <jcpenney.com/pants>. These circumstances demonstrate bad faith pursuant to Policy ¶ 4(b)(iii). 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).”).
Furthermore and as mentioned above, the at-issue domain name addresses a website that displays pay-per-click links to services and products offered by Complainant. Respondent’s use of a confusingly similar domain name to commercially benefit from Complainant’s notoriety is additional evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Finally, Respondent is attempting to capitalize on the typographical errors of Internet users that are seeking Complainant’s authorized website. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). Moreover, typosquatting inherently requires an appreciation of a complainant’s rights in a mark since in coining a domain name that is a misspelling of a trademark the typosquatter must comprehend the actual mark it is misspelling. Therefore, and also in light of the fact that Respondent was a member of Complainant’s affiliate program, Respondent must have known of Complainant and its trademarks before it registered the at-issue domain name. Respondent’s prior knowledge of Complainant's trademarks additionally shows that Respondent registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oldnvavy.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 11, 2013
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