Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Domain Admin / Domain Admin
Claim Number: FA1405001557201
Complainant is Gap Inc. and its subsidiary, Old Navy (Apparel), LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Domain Admin (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldnaavy.com>, registered with Rebel.com Corp.
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.
Darryl C. Wilson, 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, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <oldnaavy.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com 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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@oldnaavy.com. Also on May 13, 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 June 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a. Policy ¶ 4(a)(i)
i. Complainant, Gap Inc. and its subsidiary, Old Navy (Apparel), LLC, provides customers with a range of fashion options from business and casual wear to athletic clothing available for both children and adults.
ii. Complainant owns trademark registrations with New Zealand’s Trademark Office for the OLD NAVY mark (e.g., Reg. No. 241,836, registered October 10, 1994).
iii. The disputed domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark.
b. Policy ¶ 4(a)(ii)
i. Respondent has no rights or legitimate interests in respect of the disputed domain name.
ii. Respondent has not been commonly known by the disputed domain name.
iii. 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. Policy ¶ 4(a)(iii)
i. The domain name should be considered as having been registered and being used in bad faith.
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.
d. The earliest date on which Respondent registered the <oldnaavy.com> domain name was June 6, 2007.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Gap Inc. and its subsidiary, Old Navy (Apparel), LLC of San Francisco, CA, USA. Complainant is the owner of domestic and international registrations for the mark OLD NAVY which it has used continuously since at least as early as 1994, in connection with the provision of goods and services in the fields of clothing and accessories.
Respondent is Domain Admin / Domain Admin of Wellington, New Zealand. Respondent’s registrar’s address is listed as Ottawa, Canada. Respondent registered the <oldnaavy.com> domain name on or about June 6, 2007.
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.”).
Complainant claims that it provides customers with a range of fashion options from business and casual wear to athletic clothing available for both children and adults. Complainant assert that it owns trademark registrations with New Zealand’s Trademark Office for the OLD NAVY mark (e.g., Reg. No. 241,836, registered October 10, 1994). The Panel notes that Respondent resides in New Zealand. The Panel finds that Complainant’s registration of the OLD NAVY mark with New Zealand’s Trademark Office, a valid trademark authority, sufficiently shows that it has rights in the mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant contends that Respondent’s <oldnaavy.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. The Panel notes that Respondent includes an additional letter “a” to Complainant’s OLD NAVY mark in the disputed domain name. The Panel finds that Respondent’s inclusion of a character to a mark is irrelevant to a Policy ¶ 4(a)(i) determination. 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 further notes that Respondent eliminates the space in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel finds that Respondent’s omission of spaces and addition of a gTLD does not differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that Respondent’s <oldnaavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant claims that Respondent has not been commonly known by the <oldnaavy.com> domain name. Complainant alleges that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Further, Complainant argues that it has not given Respondent permission to use Complainant’s OLD NAVY mark in any way. The Panel notes that the WHOIS record indicates that “Domain Admin / Domain Admin” is the registrant of the disputed domain name. 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. The Panel here finds that Respondent is not commonly known under the <oldnaavy.com> domain name according to Policy ¶ 4(c)(ii).
Complainant states that Respondent is using the <oldnaavy.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 notes that Respondent uses the disputed domain name to lead to a pay-per-click competing link directory, containing hyperlinks titled “Looking for Old Navy?,” “Old Navy Info,” “Dress in Style for Summer,” and others. As such, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent is not using the <oldnaavy.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant. The Panel notes that Respondent is using the disputed domain name to provide advertisements to Complainant and competitors of Complainant. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s legitimate clothing business, therefore Respondent has registered and is using the <oldnaavy.com> domain name in bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“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).”).
Complainant alleges that Respondent is using the <oldnaavy.com> domain name to attract and mislead consumers for its own profit. The Panel notes that Respondent is using the disputed domain name to lead Internet users to a website offering links that compete with Complainant, such as “Looking for Old Navy?,” “Old Navy Info,” “Dress in Style for Summer,” and more. Complainant asserts that Respondent is using the disputed domain name in connection with generating revenue as a click-through website. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found that respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names. The Panel here finds that Respondent has registered and is using the <oldnaavy.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant claims that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent’s <oldnaavy.com> domain name merely adds a letter to Complainant’s OLD NAVY mark, making a typographical error. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel found that respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel here finds that Respondent has engaged in typosquatting, and therefore has registered and is using the <oldnaavy.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <oldnaavy.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 20, 2014
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