national arbitration forum

 

DECISION

 

The Gap, Inc. v. Wingathr In. Ltd.

Claim Number: FA1306001507428

PARTIES

Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Wingathr In. Ltd. (“Respondent”), Antigua and Barbuda.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <okdnavy.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2013; the National Arbitration Forum received payment on June 28, 2013.

 

On June 30, 2013, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <okdnavy.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 July 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 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@okdnavy.com.  Also on July 9, 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 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant, The Gap, Inc., provides customers with a range of fashion options from business and casual wear to athletic clothing available for both children and adults.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OLD NAVY mark (e.g., Reg. No. 2,006,872, registered October 8, 1996). Complainant also owns trademark registrations with Australia’s Attorney-General Department for the OLD NAVY mark (e.g., Reg. No. 642,585, registered January 29, 1997).
    3. The disputed domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. The addition of the generic top-level domain (“gTLD”) is not relevant.
    4. Respondent has no rights or legitimate interests in respect of the disputed domain name.

                                          i.    Respondent has not been commonly known by the disputed domain name.

                                         ii.    Respondent is using the disputed 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.

    1. The domain name should be considered as having been registered and being used in bad faith.

                                          i.    Respondent has listed the disputed domain name for sale.

                                         ii.    Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.

                                        iii.    Respondent has registered and used the disputed domain name in bad faith by using the disputed domain name to attract and mislead consumers for its own profit.

                                       iv.    Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.

                                        v.    Respondent surely had actual knowledge of Complainant’s rights in the at-issue trademarks at the time it registered the disputed domain name.

    1. The earliest date on which Respondent registered the disputed domain name, <okdnavy.com>, was November 13, 2006.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is The Gap, Inc. which list its address as San Francisco, CA, USA, and owns, uses, as well as has registered the OLD NAVY mark both domestically and abroad for retail clothing goods and services. Complainant has continuously used the mark since at least 1997 throughout the world in thousands of stores as well as via e-commerce at its <oldnavy.com> website.

 

Respondent is Wingather In. Ltd., which list its address as Saint Johns, Antigua and Barbuda. Respondent’s registrar’s address is listed as Brisbane, QLD, Australia. Respondent registered the disputed name on November 13, 2006.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant contends that it provides customers with a range of fashion options from business and casual wear to athletic clothing available for both children and adults. Complainant asserts that it is the owner of trademark registrations with the USPTO for the OLD NAVY mark (e.g., Reg. No. 2,006,872, registered October 8, 1996). See Exhibit E. Complainant also argues that it owns trademark registrations with Australia’s Attorney-General Department for the OLD NAVY mark (e.g., Reg. No. 642,585, registered January 29, 1997). The Panel finds that because Respondent appears to operate in Australia, Complainant sufficiently established its rights in the OLD NAVY mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with Australia’s Attorney-General Department and other trademark agencies. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Complainant asserts that the <okdnavy.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. The Panel notes that Respondent substitutes the letter “l” in Complainant’s OLD NAVY mark with the letter “k.” The Panel finds that Respondent’s substitution of letters does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding 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”). The Panel also notes that Respondent removes the space and adds the gTLD “.com” to Complainant’s OLD NAVY mark. The Panel finds that Respondent’s omission of spaces and addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. 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)). The Panel finds that Respondent’s <okdnavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark pursuant to Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes 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). The Complainant has met this burden.

 

Complainant claims that Respondent has not been commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Wingathr In. Ltd.” as the registrant. See Exhibit I. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way, nor has Complainant given Respondent permission to use Complainant’s mark in a domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <okdnavy.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant alleges that Respondent is using the disputed 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. The Panel notes that Respondent’s <okdnavy.com> domain name resolves to a webpage featuring hyperlinks titled “Oldnavy,” “Old Navy Coupons,” “Old Navy Application,” and as well as other generic hyperlinks. See Exhibit H. Complainant argues that Respondent presumably receives pay-per-click fees from these linked websites featured on its disputed domain name. The Panel finds that Respondent is not using the disputed domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.

 

The Complainant has proven this element.

Registration and Use in Bad Faith

Complainant asserts that Respondent has listed the disputed domain name for sale. The Panel notes that the DomainTools WHOIS record website for the <okdnavy.com> domain name states “OkDnaVy.com is for sale. The owner of the domain you are researching has it listed for sale.” See Exhibit I. Prior panels have determined that a respondent’s general offer of sale of a domain name evidences bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). The Panel finds that Respondent has registered and is using the <okdnavy.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).

 

Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel notes that Respondent’s disputed domain name resolves to a website providing competing hyperlinks titled “Oldnavy,” “Old Navy Coupons,” “Old Navy Application,” and others. See Exhibit H. Complainant claims that these links divert potential customers away from Complainant to seemingly related third-party websites and that this in turn disrupts Complainant’s business. The Panel notes that ordinarily it must appear plainly, or through corroborating evidence, that a domain name is somehow used in a way that is competitive specifically to Complainant. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) The Panel finds that there is no clear evidence that the hyperlinks that appear to Internet users on the <okdnavy.com> domain name take Internet users to anywhere other than (a) Complainant’s own products, or (b) wholly unrelated goods or services, and therefore the hyperlinks are evidence of bad faith registration and use.

 

Complainant contends that Respondent has registered and used the disputed domain name in bad faith by using the disputed domain name to attract and mislead consumers for its own profit. The Panel notes that Respondent’s <okdnavy.com> domain name resolves to a webpage containing competing hyperlinks. See Exhibit H. Complainant argues that Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates bad faith. The Panel finds that Respondent has set up a “click through” website featuring hyperlinks, and that in the absence of any other purpose this advertisement-oriented use is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). 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 argues that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent’s <okdnavy.com> domain name substitutes the letter “l” in Complainant’s OLD NAVY mark for the letter “k.” Prior panels have found that a respondent has engaged in typosquatting where it has registered a disputed domain name with a common misspelling of a complainant’s mark. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain.  ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”). The Panel finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) by engaging in typosquatting.

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <okdnavy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                    Darryl C. Wilson, Panelist

                                       Dated: August 13, 2013

 

 

 

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