The Gap, Inc. v. Transure Enterprise Ltd c/o Host Master
Claim Number: FA1006001330887
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <oldnacvy.com>, registered with Above.com Pty Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2010.
On June 22, 2010, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <oldnacvy.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. 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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2010 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@oldnacvy.com by e-mail. Also on June 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 July 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 makes the following assertions:
1. Respondent’s <oldnacvy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark.
2. Respondent does not have any rights or legitimate interests in the <oldnacvy.com> domain name.
3. Respondent registered and used the <oldnacvy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., has operated clothing and accessory stores through its OLD NAVY mark since 1994. Complainant offers its clothing and accessories in retail stores and online through its official <oldnavy.com> website. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its OLD NAVY mark (e.g., Reg. No. 1,931,339 issued October 31, 1995). Complainant also owns several trademark registrations with other governmental trademark authorities worldwide, including the European Union’s Office for the Harmonization in the Internal Marketplace (“OHIM”) (e.g. Reg. No. 422147 issued January 13, 1999).
Respondent, Transure Enterprise c/o Host Master, registered the <oldnacvy.com> domain name on June 29, 2007. Respondent’s disputed domain name resolves to a website that displays third-party links to Complainant’s official <oldnavy.com> website as well as to the websites of Complainant’s competitors.
Complainant also submits evidence showing that Respondent
has a previously registered other domain names that infringe upon the trademark
rights of others and has been ordered by UDRP panels to transfer the disputed
domain names to the respective complainants.
See State Farm Mut. Auto. Ins. Co.
v. Transure Enter. Ltd. c/o Host Master, FA 1274192 (Nat. Arb. Forum Aug.
27, 2009); see also Sears Brands, LLC v.
Transure Enter. Ltd. c/o Host Master, FA 1289248 (Nat. Arb. Forum Nov. 21, 2009); see also Ryder Sys. Inc. v. Transure Enter. Ltd. c/o Host Master, FA 1274369
(Nat. Arb. Forum Aug. 31, 2009).
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."
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.”).
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.
The Panel finds that Complainant has submitted sufficient evidence to establish rights in its OLD NAVY mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,931,339 issued October 31, 1995) and OHIM (e.g. Reg. No. 422147 issued January 13, 1999). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant alleges that the <oldnacvy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark because the domain name contains Complainant’s mark entirely while adding the letter “c,” removing the space between the terms of the mark, and adding the generic top-level domain (“gTLD”) “.com” to the mark. The Panel finds that Respondent’s <oldnacvy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark under Policy ¶ 4(a)(i) because spaces are not allowed in domain names, adding the letter “c,” which is adjacent to the letter “v” on the keyboard, is not sufficient to distinguish the disputed domain name from the mark, and the gTLD “.com” is not relevant to Policy ¶ 4(a)(i) because it is a required element of a domain name. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case of its allegations. Upon proof of Complainant’s prima facie case the burden then shifts to Respondent to show that it does possess rights and legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). The Panel finds that Complainant has produced a prima facie case of its allegations. Due to Respondent’s failure to respond to these proceedings the Panel finds that it may accept as true the allegations within the Complaint. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel will analyze all evidence on record to determine whether Respondent possesses rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has not been commonly known by the <oldnacvy.com> domain name, and that Complainant has not licensed, authorized, or permitted Respondent to register the domain name containing Complainant’s OLD NAVY mark. The WHOIS information, as supplied by Complainant, does not indicate that Respondent is commonly known by the disputed domain name and Respondent has not come forward with evidence or assertions to refute Complainant’s claims. Therefore, the Panel finds that Respondent is not commonly known by the <oldnacvy.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <oldnacvy.com> domain name resolves to a website that contains third-party links to Complainant’s official websites resolving from the <oldnavy.com> and <gap.com> domain names as well as to websites of Complainant’s competitors in the casual clothing and accessories business. The Panel presumes that Respondent collects click-through and affiliate fees for such links. Therefore, the Panel finds that Respondent is not using the <oldnacvy.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent registered and is using the <oldnacvy.com> domain name which contains a misspelled version of Complainant’s OLD NAVY mark. Previous panels have determined that registration and use of domain names containing commonly misspelled versions of a complainant’s trademark constitutes typosquatting and that as such the respective respondent’s lacked rights and legitimate interests in the typosquatted domain name. Therefore, the Panel finds that Respondent’s registration and use of the <oldnacvy.com> domain name is further evidence that Respondent lacks rights and legitimate interests in the <oldnacvy.com> domain name under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”)
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent has engaged in a pattern
of registering domain names that infringe upon the trademark rights of others,
and that as such Respondent registered and is using the <oldnacvy.com>
domain name in bad faith. Complainant
submits past UDRP decisions of which Respondent was also the respondent and was
ordered to transfer the domain names to the respective complainants. See
State Farm Mut. Auto. Ins. Co. v. Transure Enter. Ltd. c/o
Host Master, FA 1274192 (Nat. Arb.
Forum Aug. 27, 2009); see also Sears
Brands, LLC v. Transure Enter. Ltd. c/o Host Master, FA 1289248 (Nat. Arb. Forum Nov.
21, 2009); see also Ryder Sys. Inc. v.
Transure Enter. Ltd. c/o Host Master, FA 1274369 (Nat. Arb. Forum Aug. 31, 2009). The Panel finds that Respondent has engaged
in pattern cybersquatting as evidenced by multiple adverse UDRP decisions
against it. Therefore, the Panel finds
that Respondent registered and is using the <oldnacvy.com> domain
name in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Complainant further argues that Respondent is using the disputed domain name to redirect Internet users to the websites and businesses of other clothing and accessory brands. The Panel infers that such use results in a disruption of Complainant’s business because some Internet users will make purchases at other businesses believing those businesses to be affiliated with Complainant. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent’s website is intentionally attracting Internet users for Respondent’s commercial gain. Complainant contends that Respondent is taking advantage of the confusing similarity between Complainant’s OLD NAVY mark and official <oldnavy.com> website and the <oldnacvy.com> domain name to profit from click-through fees associated with the third-party links displayed on Respondent’s website, including those of Complainant. The Panel finds that Respondent’s use of the disputed domain name is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the 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 the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Lastly, the Panel previously decided that Respondent’s registration and use of the <oldnacvy.com> domain name constitutes typosquatting. Previous panels have found that typosquatting is evidence of bad faith registration and use under Policy ¶ 4(a)(iii), and so this Panel finds. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oldnacvy.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice Supreme Court, NY (Ret.)
Dated: July 23, 2010
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