The Gap, Inc. v. Conquistador Sat
Claim Number: FA1310001523922
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Conquistador Sat (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onldnavy.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 11, 2013; the National Arbitration Forum received payment on October 11, 2013.
On October 14, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <onldnavy.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 October 14, 2013, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 4, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@onldnavy.com. Also on October 14, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 November 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 established the OLD NAVY brand in 1994, and has used it ever since to market casual apparel and related products sold in its OLD NAVY stores and online.
Complainant has registered the OLD NAVY mark with trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,006,872, registered October 8, 1996).
Respondent registered the <onldnavy.com> domain name on October 2, 2006.
The domain name is confusingly similar to Complainant’s OLD NAVY mark.
Respondent has not been commonly known by the domain name.
Complainant has not given Respondent permission to use Complainant's OLD NAVY mark in a domain name.
Respondent is not sponsored by or affiliated with Complainant in any way.
Respondent is not using the <onldnavy.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent uses the domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business.
Respondent presumably receives pay-per-click fees from the operation of these linked websites.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s employment of the domain name disrupts Complainant’s business.
The domain name constitutes an instance of typo-squatting.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the OLD NAVY trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Germany). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panel there finding that it does not matter whether a UDRP com-plainant has registered its trademark in the country in which a respondent re-sides, only that it can establish rights in its mark in some jurisdiction.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <onldnavy.com> domain name is confus-ingly similar to Complainant’s OLD NAVY mark. The domain name contains the entire mark, with the omission of the space between terms of the mark, and the addition of an extraneous letter “n” and of the generic Top-Level Domain “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See, for example, Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also 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 of the mark of another and the addition of a gTLD do not establish distinctiveness from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <onldnavy.com> domain name, that Respondent is not sponsored by or legitimately affiliated with Com-plainant in any way, and that Complainant has not given Respondent permission to use the OLD NAVY mark in a domain name. Moreover, the WHOIS informa-tion for the domain name identifies the registrant only as “Conquistador Sat,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <onldnavy.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark, and where that respondent failed to submit evidence show-ing that it was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <onldnavy.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, in that Respondent uses the domain name to redirect unsuspecting Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business, and in that Respondent presum-ably receives pay-per-click fees from the operation of these links. This employ-ment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with a UDRP complainant’s financial services website, was not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <onldnavy.com> domain name to host a website featuring links to the websites of Complainant’s commercial competitors disrupts Complainant’s business. This stands as evidence of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See, for example, David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a re-spondent registered and used a disputed domain name in bad faith as provided in Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a UDRP complainant’s commercial competitors, thus dis-rupting that complainant’s business).
We are also convinced by the evidence that Respondent’s employment of the contested domain name, which is confusingly similar to Complainant’s OLD NAVY trademark, to profit from confusion caused among Internet users as to the possibility of Complainant’s affiliation with the domain name demonstrates bad faith registration and use of the domain name as described in Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel there finding, under Policy ¶ 4(b)(iv), that a respondent exhibited bad faith registration and use where that respondent took advantage of the confusing similarity between a disputed domain name and a UDRP complainant’s mark in order to profit from the goodwill associated with the mark.
Finally, we conclude that Respondent's registration of the <onldnavy.com> do-main name represents an instance of typo-squatting, the deliberate misspelling of the mark of another in creating a domain name in order to exploit the typing mis-takes of internet users made in entering in a web browser the names of mark holders with which they wish to do business. Typo-squatting is independent evidence of bad faith in the registration of a domain name. See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of a UDRP complainant's DERMALOGICA mark, which indicated typo-squatting, and, therefore, bad faith registration of the domain name pursuant to Policy ¶ 4(a)(iii)).
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <onldnavy.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 18, 2013
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