GAP INC and its subsidiary BANANA REPUBLIC (APPAREL), LLC. v. Domain Admin / Hong Kong Domain
Claim Number: FA1405001557193
Complainant is GAP INC and its subsidiary BANANA REPUBLIC (APPAREL), LLC. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is Domain Admin / Hong Kong Domain (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bananarepubli.com>, registered with Internet.bs Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 2, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <bananarepubli.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 May 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@bananarepubli.com. Also on May 2, 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 May 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <bananarepubli.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
2. Respondent does not have any rights or legitimate interests in the <bananarepubli.com> domain name.
3. Respondent registered and uses the <bananarepubli.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are GAP Inc. and Banana Republic (Apparel), LLC. Complainants contend that GAP acquired Banana Republic in 1983.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that there is a sufficient nexus or link between the Complainants, and will treat them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
a. Canadian Intellectual Property Office (“CIPO”) (Reg. No. 482257 registered September 9, 1997) and
b. China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1493129, registered December 21, 2000).
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 Panel finds that Complainant’s trademark registrations establish Complainant’s rights in the BANANA REPUBLIC mark under Policy ¶ 4(a)(i). Previous panels have determined that a complainant’s registration with a trademark agency is sufficient to establish the complainant’s rights in the registered trademark regardless of whether the respondent resides in the jurisdiction of the registration agency. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote that, “ [the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”); see also Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Respondent’s <bananarepubli.com> domain name removes the spaces from Complainant’s mark and the letter “c” from “Republic.” Respondent also adds the gTLD “.com” to Complainant’s mark. Previous panels have determined that such alterations are insufficient to differentiate the resulting domain name from the incorporated mark pursuant to Policy ¶ 4(a)(i). For example, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) the panel found that the elimination of spaces between terms and the addition of a gTLD did not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). See also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) where the panel concluded that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark as it eliminated the initial letter “g.” Thus, the Panel finds that the <bananarepubli.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant asserts that Respondent has no rights or legitimate interests in the <bananarepubli.com> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name, and asserts that Respondent has no trademark or intellectual property rights in the disputed domain name. The WHOIS information lists “Domain Admin / Hong Kong Domain” as the registrant of the disputed domain name. Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. With no evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the 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 the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent is not using the <bananarepubli.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that the disputed domain name redirects Internet users to Complainant’s own website in violation of Complainant’s affiliate program. The panel in Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) concluded that by signing up for the complainant’s affiliate program upon registering the domain name, a misspelling of the complainant’s mark, the respondent intended to profit off the domain name at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s own website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, and thus Respondent has no rights or legitimate interests in the <bananarepubli.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant further contends that Respondent’s registration of the <bananarepubli.com> domain name constitutes typosquatting. The Panel agrees and finds that the <bananarepubli.com> domain name is a misspelled version of Complainant’s mark, and thus Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Prior panels, such as the panel in LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) have previously found that an intentionally misspelled domain name, clearly mimicking a version of a complainant's mark indicates “typosquatting” and is evidence that Respondent lacked rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is a serial typosquatter. The Panel notes other UDRP decisions against Respondent. See Macy’s Dep’t. Stores, Inc. v. Hong Kong Domain c/o Domain Admin, FA 1293614 (Nat. Arb. Forum Dec. 23, 2009); see also ESPN, Inc. v. Name Administrator c/o Hong Kong Domains LLC, FA 1301674 (Nat. Arb. Forum Feb. 24, 2010); see also Homer TLC, Inc. v. Hong Kong Domain/ Domain Admin, FA 1541730 (Nat. Arb. Forum March 17, 2014). Previous panels have found evidence of bad faith under Policy 4(b)(ii) where a respondent has a history of bad faith as demonstrated by past UDRP decisions. 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 the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel finds bad faith registration under Policy ¶ 4(b)(ii).
Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which Complainant states is in direct violation of its affiliate agreement. The Panel notes the decision in Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) where the panel decided that by registering the typosquatted domain name in a complainant’s affiliate program, respondent profited on the goodwill of complainant’s protected marks and primary Internet domain names, and therefore registered and used the domain name in bad faith. Likewise, in the current case, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent was aware of Complainant’s rights in the BANANA REPUBLIC mark when registering the disputed domain name. The Panel notes that Respondent’s disputed domain name resolves to Complainant’s legitimate website. The Panel finds that Respondent had actual knowledge of Complainant’s rights and that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”).
Respondent’s registration and use of the disputed domain also name demonstrates typosquatting. Previous panels have found that typosquatting is an indication of bad faith. 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).”). The Panel finds that Respondent’s use and registration of the disputed domain name indicates typosquatting, further evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bananarepubli.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 2, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page