The GAP, INC., Old Navy (Apparel), LLC and Old Navy (ITM) Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA1809001805529
Complainant is The GAP, INC., Old Navy (Apparel), LLC and Old Navy (ITM) Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldbavy.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on September 11, 2018; the Forum received payment on September 11, 2018.
On September 14, 2018, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <oldbavy.com> domain name (the “Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 September 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 9, 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@oldbavy.com. Also on September 18, 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 October 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 Name be transferred from Respondent to Complainant.
Mulitiple Complainants
Four parties, The GAP, INC., Old Navy, LLC, Old Navy (Apparel), LLC, and Old Navy (ITM) Inc. filed this administrative proceeding as Complainants. The relevant rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e). Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” 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.” 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 (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 this case, the Complaint states that The Gap, Inc. and its wholly-owned subsidiaries are the registered trademark holders of the brands Gap, Old Navy and others. Amended Complaint Exhibit E shows that trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OLD NAVY brand are held by Old Navy (Apparel) LLC, assigned from GPS (Del.), Inc. Amended Complaint Exhibit J shows that the domain name resolving to Complainant’s primary website at <oldnavy.com> is registered to Gap, Inc., and that the Administrative Contact for that domain name is listed as Old Navy (Apparel), LLC.
Based upon the information in Amended Complaint Exhibits E and J, and the uncontested and undisputed allegations in the Complaint, the Panel is satisfied that there is a sufficient nexus among the named Complainants to enable each of them to claim rights in the Domain Name. It is both procedurally efficient and equitable to all parties for a single Complaint to be permitted by all four Complainants, and the Panel will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to all named Complainants.
A. Complainant
Complainant operates an in-store and online business marketing causal apparel and related products through its OLD NAVY mark. Complainant registered that mark with the USPTO (Reg. No. 1,928,001) on October 17, 1995. Respondent’s Domain Name is identical or confusingly similar to Complainant’s OLD NAVY mark as it incorporates the mark in its entirety, altering it only by substituting the letter “b” for the letter “n” and adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not authorized or licensed Respondent to use its OLD NAVY mark and Respondent is not commonly known by the Domain Name. Additionally, Respondent fails to use the Domain Name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s Domain Name resolves to Complainant’s website, a violation of an affiliate agreement between Complainant and Respondent.
Respondent registered and uses the Domain Name in bad faith. Respondent attempts to sell the disputed domain name for more than its out-of-pocket costs. Additionally, Respondent has engaged in a pattern of bad faith registration, shown through past UDRP cases. Furthermore, Respondent’s Domain Name resolves to Complainant’s website, which violates an affiliate agreement between the parties. Also, Respondent’s has engaged in “typosquatting.” Finally, Respondent had actual knowledge of Complainant’s rights in the OLD NAVY mark when it registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
Complainant registered its OLD NAVY mark with the USPTO (Reg. No. 1,928,001) on October 17, 1995. See, Amended Complaint Exhibit E. Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s Domain Name is confusingly similar to the OLD NAVY mark, as it incorporates the mark in its entirety, altering it only by replacing the letter “n” with a “b” and adding a gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’), OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”).
For the reasons discussed above, the Panel finds that the Domain Name is confusingly similar to the OLD NAVY mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not commonly known by the Domain Name, (ii) it is not sponsored by or legitimately affiliated with Complainant in any way, nor has Complainant given it permission to use Complainant’s mark in a domain name, and (iii) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it redirects Internet visitors to Complainant’s own web site in violation of an affiliate agreement between the parties. The first two of these allegations are supported by competent evidence.
According to information furnished to the Forum by Gransy, s.r.o. d/b/a subreg.cz, the registrar of the Domain Name, the registrant of the Domain Name is “Hulmiho Ukolen,” and the registrant organization is listed as “poste restante.” Neither of these names bears any resemblance to the Domain Name. Where a response is lacking, relevant WHOIS information or other reliable information furnished by a registrar may be used to identify a respondent for the purposes of Policy ¶ 4(c)(ii). State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it, and that it has never permitted Respondent to use its OLD NAVY mark in a domain name. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the domain name, the respondent may be presumed to lack rights or legitimate interests in it. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Finally, Complainant states that the Domain Name redirects Internet traffic to Complainant’s own web site and alleges that this is in violation of the terms of an affiliation agreement it has with Respondent. Amended Complaint Exhibit H demonstrates that the Domain Name resolves directly to Complainant’s <oldnavy.com> web site. Complainant states that Amended Complaint Exhibit M is a copy of its affiliate agreement with Respondent. It is not. Amended Complaint Exhibit M is the textual content of a “Publisher Service Agreement” between an entity named Commission Junction, Inc., a Delaware corporation (“CJ”), and an unnamed party, referred to in the agreement as “You.” The agreement is not dated, no specific person or entity is named or identified as the “You” party, and no signature lines appear for either CJ or You. The agreement purports to establish a contractual framework for You to enter into separate “Click-through Agreements” with other parties, called “Advertisers,” which arrangement is hosted by CJ. The agreement recognizes and addresses the opportunity, again through separate agreements between You and the Advertisers, for You to receive revenues from Advertisers for “transactions,” which may be click-through referrals from web sites owned by You. The agreement prohibits You from infringing an Advertiser’s proprietary rights, including but not limited to trademark rights, but the Panel was unable to find any provision of this agreement prohibiting You from redirecting Internet traffic to the Advertiser’s web site. Indeed, the agreement appears to establish a framework within which You and an Advertiser are able by separate agreement to provide compensation to You for doing that very thing—directing Internet traffic to Advertiser’s web site—on the condition that You does not infringe anyone’s proprietary rights.
In any event, Amended Complaint Exhibit M is not an affiliation agreement between Complainant and Respondent. Notwithstanding the fact that Amended Complaint Exhibit M is not it, and notwithstanding the fact that Complainant alleges elsewhere in the Complaint that “Respondent is not sponsored by or legitimately affiliated with Complainants in any way,” Complainant alleges that it does have an affiliation agreement with Respondent and that this agreement prohibits Respondent from redirecting Internet traffic to Complainant’s web site. These allegations are not disputed. The Panel infers from the substance of Amended Complaint Exhibit M and Complainant’s allegations that the parties may have some kind of agreement which might fit within the concept of the “Click-through Agreement” addressed in the Publisher Service Agreement discussed above. The Panel speculates that this agreement would be more likely to restrict Respondent from infringing Complainant’s trademark rights than it would prohibit Respondent from directing Internet traffic to Complainant’s web site. Nevertheless, without the actual agreement before it the Panel is not able to determine what the operative terms of such agreement might be. Accordingly, the Panel rejects the arguments asserted by Complainant to the effect that by redirecting Internet traffic to Complainant’s web site, Respondent’s conduct somehow violates an agreement between the parties.
Although the Panel does not make any findings based upon an alleged violation of an agreement between Complainant and Respondent, it appears, based upon the first two factors discussed above, that Complainant has made its prima facie case. In the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
Complainant alleges that Respondent had some sort of affiliation arrangement with it. While the Panel is to unable to determine the operative terms of that arrangement, the Panel is persuaded that some sort of affiliation arrangement between the parties did exist, and it is clear from this that Respondent had full knowledge of Complainant and its rights in the OLD NAVY mark when it entered into that arrangement. There is no evidence of when this arrangement came into being but given the world-wide fame and notoriety Complainant and its mark had attained by June 2013 when Respondent registered the Domain Name, and the fact that the Domain Name incorporates that mark verbatim, albeit with a common misspelling, it is certain that Respondent had actual knowledge of Complainant and its OLD NAVY mark when it registered the Domain Name. (See, Amended Complaint Exhibit I, the WHOIS report for the Domain Name, for date of registration). Policy 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith for the purposes of Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Amended Complaint Exhibit I also features a notice reading as follows: “Old BavY.com is for sale! The owner of the domain name you are researching has listed it for sale at $25,000.00.” This evidence does not place Respondent strictly within the circumstances articulated by Policy ¶ 4(b)(i), but again, given the non-exclusive nature of Policy ¶ 4(b), a general offer to sell a domain name has been held to be evidence of bad faith. In Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066, the panel held as follows:
There is nothing inherently wrong in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent’s offer of the Disputed Domain Name(s) for sale was not made specifically to Complainants or their competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy.
Respondent’s notice in the WHOIS report is clear. It is willing to sell the Domain Name to anyone willing to pay the $25,000 asked. There is no evidence as to when in relation to the date of registration this notice was first posted, but its existence is clear evidence of bad faith use in any event.
Finally, it is evident that Respondent registered the Domain Name because, by design, it contains Complainant’s mark with a subtle misspelling that would likely deceive Internet users who mistakenly type the misspelling of Complainant’s name into believing that they had reached Complainant’s web site. This practice is known as “typosquatting.” Given the non-exclusive nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”). Even though the Domain Name redirects Internet traffic to Complainant’s web site, Respondent is attempting to capture Internet traffic intended for Complainant and while the exact nature of his use of that traffic, or the benefit derived from it, is not known, its use of the Domain Name for its own purposes is nevertheless evidence of bad faith. The fact that Respondent incorporated Complainant’s OLD NAVY mark so obviously, with a common misspelling of it, into the Domain Name is ample evidence that he is intentionally attempting to capitalize on Complainant’s mark. Even without evidence of revenues or other advantage resulting from this, the obvious use of Complainant’s mark in this Domain Name is sufficient evidence of bad faith registration and use for the purposes of Policy ¶ 4 (a)(iii). Red Bull GmbH v. Gutch, WIPO Case No. 2000-0766 (September 21, 2000) (finding bad faith registration and use where respondent’s domain name incorporated complainant’s mark verbatim but respondent had not yet activated the resolving web site). Domain name Registrants who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oldbavy.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
October 15, 2018
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