THE GAP, INC., ATHLETA, INC, ATHLETA (ITM) INC, BANANA REPUBLIC (APPAREL), LLC, BANANA REPUBLIC (ITM) INC, OLD NAVY (APPAREL), LLC AND OLD NAVY (ITM) INC. v. Protection Domain
Claim Number: FA1811001814848
Complainants are THE GAP, INC., ATHLETA, INC, ATHLETA (ITM) INC, BANANA REPUBLIC (APPAREL), LLC, BANANA REPUBLIC (ITM) INC, OLD NAVY (APPAREL), LLC AND OLD NAVY (ITM) INC. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Protection Domain (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ahleta.com>, <athlta.com>, <bananarepublica.com>, <olddnavy.com>, <olfnavy.com>, and <olldnavy.com> (‘the Domain Names’), registered with Above.Com Pty Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2018; the Forum received payment on November 2, 2018.
On November 6, 2018, Above.Com Pty Ltd. confirmed by e-mail to the Forum that the <ahleta.com>, <athlta.com>, <bananarepublica.com>, <olddnavy.com>, <olfnavy.com>, and <olldnavy.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.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 November 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2018 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@ahleta.com, postmaster@athlta.com, postmaster@bananarepublica.com, postmaster@olddnavy.com, postmaster@olfnavy.com, and postmaster@olldnavy.com. Also on November 12, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
Gap Inc. and its wholly owned subsidiaries are the owner of the trademarks ATHLETA (first use 1998), BANANA REPUBLIC (first use 1978) and OLD NAVY (first use 1994) registered, inter alia, in the USA for clothing and related services.
The Domain Names all registered after 2010 are typosquatted misspelled versions of and confusingly similar to one of the Complainant’s marks. The addition of the gTLD .com does not prevent this confusing similarity.
Respondent does not have any rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names or authorized by the Complainant to use any of the Complainant’s marks. The Respondent is using the Domain Names to point to sites of the Complainant’s competitors or to pay per click links for commercial gain (both unconnected and connected to the Complainant where the Complainant’s brand is spelled correctly) or to the Complainant’s own website none of which uses are a bona fide offering of goods or services or a legitimate noncommercial fair use.
Such use is bad faith registration and use, confusing and diverting Internet users for commercial gain. It is also disrupting the Complainant’s business.
Typosquatting is also evidence of bad faith per se. <bananarepublica.com>, <olddnavy.com>, <olfnavy.com> and <olldnavy.com> have also been offered for sale for profit. The Respondent did not respond to a cease and desist letter from the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Gap Inc. and its wholly owned subsidiaries are the owner of the registered trademarks ATHLETA (first use 1998), BANANA REPUBLIC (first use 1978) and OLD NAVY (first use 1994) registered, inter alia, in the USA for clothing and related services.
The Domain Names all registered after 2010 are typosquatted misspelled versions of and confusingly similar to one of the Complainant’s marks. They have been pointed to the sites of competitors of the Complainants, pay per click links or the Complainant’s own web site. <bananarepublica.com>, <olddnavy.com>, <olfnavy.com> and <olldnavy.com> have also been offered for sale for profit.
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(f), 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 (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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are seven Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The 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.” Since the Complainant companies are all members of the same group the Panel finds sufficient nexus in this case.
Identical or Confusingly Similar
Gap Inc. and its wholly owned subsidiaries are the owner of the registered trademarks ATHLETA (first use 1998), BANANA REPUBLIC (first use 1978) and OLD NAVY (first use 1994) registered, inter alia, in the USA for clothing and related services.
The Domain Names consists of misspellings of one of the Complainant’s ATHLETA, BANANA REPUBLIC and OLD NAVY trademarks and the gTLD .com.
A gTLD does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are all individually confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact. commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web sites to which the Domain Names redirect are either the site of the Complainant itself, sites of the Complainant’s competitors or pay per click link pages. Such use is commercial so cannot be a legitimate noncommercial fair use. The sites do not make it clear that there is no commercial connection between the Domain Names and the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Direct Line Ins. Plc v Low-cost-domain, FA 1337658 (Forum September 8, 2010) (pointing to Complainant’s own site is not a bona fide offering of goods or services or a legitimate noncommercial fair use). See also Ashley Furniture Industries Inc v domain admin /private registrations aitken Gesellschaft, FA 1506001626253 (Forum July 29, 2015) (linking to pay per click links does not amount to a bona fide offering of goods and services or a legitimate noncommercial fair use) and See also Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
Typosquatting, offering such domain names for sale and failing to answer a cease and desist letter are also an indication of a lack of rights and legitimate interests.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register domain names containing signs confusingly similar to the Complainant’s marks and use them to point to competing products or services or to point to the Complainant’s own web site suggesting a connection to the Complainant in what appears on the face of it to be typosquatting registrations.
In the opinion of the panelist the use made of the Domain Names in relation to the sites to which they have been attached is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they offer competing products or services or point to the Complainant’s own site under signs confusingly similar to the Complainant’s marks. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites or products or services on them likely to disrupt the business of the Complainant. See American Council on Education and GED Testing Service LLC v Anthony Williams, FA 1760954 (Forum January 8, 2018) and Capital One Financial Corp DN Manager/Whois-Privacy.net Ltd, FA1504001615034 (Forum June 4, 2015).
Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name which entirely incorporates a misspelling of a mark in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under Paras 4(b)(iii) and (iv).
It is also noted that <bananarepublica.com>, <olddnavy.com>, <olfnavy.com> and <olldnavy.com> have been offered for sale. This is also indicative of bad faith under Policy 4(b)(i) with respect to those domain names. See DIRECTTV, LLC v michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ahleta.com>, <athlta.com>, <bananarepublica.com>, <olddnavy.com>, <olfnavy.com>, and <olldnavy.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 5, 2018
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