The Gap, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1401001541856
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bananarepubllic.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 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 January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On February 4, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <bananarepubllic.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Re-spondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomain-Registry.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 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bananarepubllic.com. Also on February 4, 2014, 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 March 3, 2014, pursuant to Complainant's request to have the dispute decid-ed 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 operates a clothing business under the name and mark BANANA REPUBLIC.
In support of that business, Complainant operates a website located at the web-site <bananarepublic.com>.
Complainant holds registrations for the BANANA REPUBLIC service mark and trademark, which are on file with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 1,347,849, registered July 9, 1985).
Respondent registered the <bananarepubllic.com> domain name on or about October 4, 2002.
The disputed domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
Respondent has not been commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BANANA REPUBLIC mark in any way.
The <bananarepubllic.com> domain name resolves to a website displaying links to the websites of third-parties which are doing business in competition with that of Complainant.
Respondent profits from its use of the domain name by means of the receipt of click-through revenue from the operation of the third-party links displayed on the resolving website.
Respondent’s registration and use of the domain name is an instance of typo-squatting.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has offered the <bananarepubllic.com> domain name for sale.
Respondent is a serial cyber-squatter that has been involved in numerous UDRP proceedings.
Respondent’s use of the <bananarepubllic.com> domain name disrupts Com-plainant’s business.
Respondent was once a member of Complainant’s affiliate program.
Respondent had actual knowledge of Complainant’s BANANA REPUBLIC mark prior to registering the <bananarepubllic.com> domain name.
Respondent registered and is using the <bananarepubllic.com> 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 and service mark 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 BANANA REPUBLIC service mark and trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a nat-ional trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdic-tion (here the United States) other than that in which Respondent resides or does business (here Saint Vincent and the Grenadines). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or oper-ates in a different country.
See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning to the core question arising under Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <bananarepubllic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC service mark and trademark. The domain name differs from Complainant’s mark by the elimination of the space between the terms of the mark and the addition of a single character and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confus-ing similarity under the standards of the Policy. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a UDRP complainant's BELKIN mark be-cause the domain name merely replaced the letter “i” in that complainant's mark with the letter “e”).
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 the terms of the mark of another and the addition of a gTLD in creating a domain name do not establish distinctiveness from the 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 <bananarepubllic.com> domain name, and that Complainant has not authorized Respondent to use its BANANA REPUBLIC mark in any way. Moreover, the WHOIS record for the do-main name identifies its registrant only as “Private Registrations Aktien Gesell-schaft / Domain Admin,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the dis-puted domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indica-tion that that respondent was commonly known by the disputed domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that the <bananarepubllic.com> domain name resolves to a website displaying links to the websites of Complainant’s third-party competitors, and that Respond-ent profits from the operation of those links. This employment of the domain name is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use which would give rise to rights or legitimate interests in favor of Respondent. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with 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) by maintaining a web page with misleading links to the websites of a UDRP complainant’s competitors in the financial services industry).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent is a serial cyber-squatter, in that it has been involved as a party respondent in more than 35 prior UDRP pro-ceedings, all of which resulted in the transfer of contested domain names to var-ious UDRP complainants upon findings of bad faith in the registration and use of the domain names in issue in those proceedings. See, for example, Avery Dennison Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1385350 (Nat. Arb. Forum June 14, 2011); see also Orbitz Worldwide, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1535412 (Nat. Arb. Forum Jan. 25, 2014). Under Policy ¶ 4(b)(ii), this pattern demonstrates bad faith in the registration and use of the domain name in the instant case. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where a respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of others).
We are also convinced by the evidence that Respondent’s employment of the <bananarepubllic.com> domain name as alleged in the Complaint disrupts Complainant’s business. This stands as proof of bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name which was confusingly similar to the mark of a UDRP complainant to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)).
In addition, that Respondent employs a domain name which is confusingly similar to Complainant’s BANANA REPUBLIC service mark and trademark to profit from the confusion caused among Internet users as to the possibility of Complainant’s association with the domain name and resolving website demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See, for example, AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent sought to profit from the use of a domain name that resolved to a website featuring links to third-party websites offering services similar to those of a UDRP complainant).
Finally, the record shows that Respondent’s <bananarepubllic.com> domain name, which differs from Complainant’s BANANA REPUBLIC mark by the addi-tion of single extraneous letter “l,” is an instance of typo-squatting, i.e.: creation of a domain name that is a common misspelling of the mark of another to take advantage of typing errors made by Internet users in entering into a web browser the mark of an enterprise with which they wish to do business. See Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008). Typo-squatting is independent evidence of bad faith in the registration and use of a domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that typo-squatting is evidence of bad faith regis-tration and use of a domain name under the Policy).
For these reasons, 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 <bananarepubllic.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 14, 2014
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