Gap, Inc. v. SMVS CONSULTANCY PRIVATE LIMITED
Claim Number: FA1401001541693
Complainant is Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is SMVS CONSULTANCY PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldbnavy.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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 January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On February 1, 2014, Feb 03, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <oldbnavy.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 February 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2014 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@oldbnavy.com. Also on February 11, 2014, 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 March 10, 2014, 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.
A. Complainant
Complainant made the following contentions.
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.
i. Respondent is a recalcitrant serial cybersquatter.
ii. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
iii. Respondent is 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a leading global clothing and clothing accessories retailer.
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 is also the owner of trademark registrations with India’s Controller General of Patents Designs and Trademarks for the OLD NAVY mark (e.g., Reg. No. 739,367, registered December 13, 1996).
3. The earliest date on which Respondent registered the <oldbnavy.com> domain name was October 20, 2005.
4. 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.
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 rights in a trademark or service mark. Complainant contends that it is a leading global clothing and clothing accessories retailer. Complainant argues that since 1994, it has used the OLD NAVY brand to market casual apparel and related products sold in its OLD NAVY stores and online. Complainant claims 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). Complainant argues that it is also the owner of trademark registrations with India’s Controller General of Patents Designs and Trademarks for the OLD NAVY mark (e.g., Reg. No. 739,367, registered December 13, 1996). See Complainant’s Exhibit F. Therefore, the Panel finds that Complainant’s registrations of the OLD NAVY mark with the USPTO and with India’s Controller General of Patents Designs and Trademarks sufficiently proves its rights in the mark under Policy ¶ 4(a)(i). 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 next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OLD NAVY mark. Complainant alleges that Respondent’s <oldbnavy.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. The Panel observes that Respondent adds the letter “b” to Complainant’s mark for its disputed domain name. The Panel holds that Respondent’s inclusion of an additional letter does not distinguish the disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel observes that Respondent removes the space in Complainant’s OLD NAVY mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel determines that Respondent’s elimination of spaces and addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. 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)). Consequently, the Panel determines that Respondent’s <oldbnavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark according to Policy ¶ 4(a)(i).
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 to use it in its domain name, adding only the letter ”b” to the trademark;
(b) 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;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant alleges that Respondent has not been commonly known by
the <oldbnavy.com> domain name. Complainant argues that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant asserts that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that the WHOIS record identifies “SMVS CONSULTANCY PRIVATE LIMITED” as the registrant of the disputed domain name. See Complainant’s Exhibit I. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Consequently, the Panel determines that Respondent is not commonly known under the <oldbnavy.com> domain name pursuant to Policy ¶ 4(c)(ii);
(e)Complainant claims that Respondent is using the <oldbnavy.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. The Panel observes that Respondent’s disputed domain name resolves to a competing hyperlink directory which features links for “Coupons Coupons Coupons,” “Old Navy Coupon Code,” “Kohls Coupons,” and others. See Complainant’s Exhibit H. Complainant contends that presumably, Respondent receives pay-per-click fees from these linked websites. Accordingly, the Panel holds that Respondent’s use of the <oldbnavy.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
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 argues that Respondent is a recalcitrant serial cybersquatter. Complainant claims that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. See Frederick’s of Hollywood Group, Inc. v. SMVS Consultancy Private Limited, FA 1302531 (Nat. Arb. Forum March 3, 2010); Google Inc. v. SMVS Consultancy Private Limited, FA 1432489 (Nat. Arb. Forum April 18, 2012); Vanguard Trademark Holdings USA LLC v. SMVS Consultancy Private Limited, FA 1351480 (Nat. Arb. Forum Nov. 15, 2010).
Secondly, Complainant asserts that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. As the Panel finds that Respondent has prior UDRP proceedings that resulted in findings of bad faith and transfer, the Panel finds that Respondent has registered and is using the <oldbnavy.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Thirdly, Complainant asserts that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel observes that Respondent’s <oldbnavy.com> domain name resolves to a webpage containing links such as “Old Navy Store Locations,” “Bloomingdales.com Coupons,” “Kohls Coupons,” and more. See Complainant’s Exhibit H. Complainant argues that these links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel held that “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).” Accordingly, the Panel determines that Respondent’s use of the <oldbnavy.com> domain name disrupts Complainant’s legitimate business, showing bad faith use and registration pursuant to Policy ¶ 4(b)(iii).
Fourthly, Complainant contends that Respondent is using the <oldbnavy.com> domain name to attract and mislead consumers for its own profit. The Panel notes that Respondent’s <oldbnavy.com> domain name links to a website that contains competing hyperlinks such as “Old Navy Store Locations,” “Bloomingdales.com Coupons,” “Kohls Coupons,” and more. See Complainant’s Exhibit H. Complainant alleges that Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith. Therefore, the Panel finds that Respondent’s use of the <oldbnavy.com> domain name to provide competing links from which Respondent financially gains demonstrates bad faith registration and use 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).”).
Fifthly, Complainant argues that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent adds the letter “b” to Complainant’s OLD NAVY mark in the <oldbnavy.com> domain name. The Panel notes that previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark. 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).”). Consequently, the Panel holds that Respondent has engaged in typosquatting, showing bad faith under Policy ¶ 4(a)(iii).
Sixthly, 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 the OLD NAVY mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the 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 <oldbnavy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 11, 2014
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