The Gap, Inc. v. Jasper Developments c/o domain manager
Claim Number: FA1006001332380
Complainant is The
Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bananarepulic.com>, registered with Enom, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2010.
On June 29, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bananarepulic.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@bananarepulic.com. Also on June 29, 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 John J. Upchurch 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 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 <bananarepulic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
2. Respondent does not have any rights or legitimate interests in the <bananarepulic.com> domain name.
3. Respondent registered and used the <bananarepulic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., operates more than 500 retail
stores in the
USPTO
BANANA REPUBLIC Reg. No. 1,347,849 issued July 9, 1985;
BANANA REPUBLIC Reg. No. 1,460,862 issued Oct. 13, 1987;
BANANA REPUBLIC Reg. No. 2,079,325 issued July 15, 1997;
BANANA REPUBLIC Reg. No. 2,222,223 issued Feb. 9, 1999;
BANANA REPUBLIC MODERN Reg. No. 2,245,433 issued May 18, 1999;
BANANA REPUBLIC MODERN Reg. No. 2,459,986 issued June 12, 2001;
BANANAREPUBLIC.COM Reg. No. 2,534,585 issued Jan. 29, 2002;
BANANA REPUBLIC Reg. No. 2,552,987 issued Mar. 26, 2002;
BANANA REPUBLIC FACTORY STORE Reg. No. 2,820,038 issued Mar. 2, 2004;
AIPO
BANANA REPUBLIC Reg. No. 46,750 issued Apr. 10, 2002;
IPA
BANANA REPUBLIC Reg. No. A559,704 issued July 15, 1991;
BANANA REPUBLIC Reg. No. A559,705 issued July 15, 1991;
BANANA REPUBLIC Reg. No. A559,706 issued July 15, 1991;
BANANA REPUBLIC Reg. No. A417,612 issued Oct. 31, 1991;
BANANA REPUBLIC Reg. No. A417,613 issued Oct. 31, 1991;
BANANA REPUBLIC Reg. No. A629,431 issued May 10, 1994;
BANANA REPUBLIC MODERN Reg. No. 750,771 issued July 24, 1998;
BANANA REPUBLIC Reg. No. 774,540 issued May 14, 1999;
BANANA REPUBLIC Reg. No. 797,908 issued June 21, 1999;
BANANA REPUBLIC Reg. No. 838,352 issued May 10, 2001;
BANANA REPUBLIC Reg. No. 885,374 issued Aug. 9, 2001;
BANANA REPUBLIC Reg. No. 1,028,132 issued Nov. 3, 2004;
BANANA REPUBLIC Reg. No. 995,975 issued Feb. 6, 2006;
BANANA REPUBLIC Reg. No. 1,099,615 issued Oct. 5, 2006;
CIPO
BANANA REPUBLIC Reg. No. 328,188 issued May 29, 1987;
BANANA REPUBLIC Reg. No. 333,181 issued Oct. 16, 1987;
BANANA REPUBLIC Reg. No. 448,969 issued Oct. 20, 1995;
BANANA REPUBLIC Reg. No. 482,257 issued Sept. 9, 1997;
BANANA REPUBLIC MODERN Reg. No. 548,246 issued July 17, 2001;
BANANA REPUBLIC Reg. No. 582,842 issued May 30, 2003;
BANANA REPUBLIC Reg. No. 582,957 issued June 3, 2003;
BANANA REPUBLIC Reg. No. 583,270 issued June 9, 2003;
BANANA REPUBLIC Reg. No. 583,531 issued June 11, 2003;
BANANA REPUBLIC Reg. No. 592,655 issued Oct. 20, 2003;
BANANA REPUBLIC Reg. No. 597,598 issued Dec. 16, 2003;
BANANA REPUBLIC Reg. No. 602,034 issued Feb. 12, 2004;
BANANA REPUBLIC Reg. No. 644,697 issued July 20, 2005;
BANANA REPUBLIC Reg. No. 715,384 issued May 29, 2008;
OHIM
BANANA REPUBLIC Reg. No. 27,037 issued Oct. 19, 1998;
BANANA REPUBLIC MODERN Reg. No. 699,025 issued Jan. 19, 2000;
BANANA REPUBLIC Reg. No. 1,097,716 issued Dec. 11, 2000;
BANANA REPUBLIC Reg. No. 1,674,811 issued July 9, 2001;
BANANA REPUBLIC Reg. No. 1,963,941 issued Mar. 15, 2002;
BANANA REPUBLIC Reg. No. 2,643,443 issued Sept. 5, 2003;
BANANA REPUBLIC Reg. No. 2,920,049 issued Mar. 8, 2004;
BANANA REPUBLIC Reg. No. 2,909,364 issued Mar. 31, 2004;
BANANA REPUBLIC Reg. No. 4,550,851 issued June 22, 2006.
Respondent, Jasper Developments c/o domain manager, registered the <bananarepulic.com> domain name on June 19, 2000. The disputed domain name resolves to a website featuring a directory of pay-per-click links to third-party websites, some of which compete with Complainant.
Respondent has been the respondent in at least three other UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See Troi Torain v. Jasper Devs., FA 653324 (Nat. Arb. Forum Apr. 18, 2006); see also Centura Health Corp. v. Jasper Devs., FA 751616 (Nat. Arb. Forum Aug. 24, 2006); see also Cabela’s, Inc. v. Jasper Devs. Pty Ltd, FA 1278819 (Nat. Arb. Forum Sept. 29, 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.
Complainant owns trademark registrations for the BANANA REPUBLIC and related marks with the USPTO and with the trademark authorities of various other countries/regions around the world, including the AIPO, IPA, the CIPO, and the OHIM:
USPTO
BANANA REPUBLIC Reg. No. 1,347,849 issued July 9, 1985;
BANANA REPUBLIC Reg. No. 1,460,862 issued Oct. 13, 1987;
BANANA REPUBLIC Reg. No. 2,079,325 issued July 15, 1997;
BANANA REPUBLIC Reg. No. 2,222,223 issued Feb. 9, 1999;
BANANA REPUBLIC MODERN Reg. No. 2,245,433 issued May 18, 1999;
BANANA REPUBLIC MODERN Reg. No. 2,459,986 issued June 12, 2001;
BANANAREPUBLIC.COM Reg. No. 2,534,585 issued Jan. 29, 2002;
BANANA REPUBLIC Reg. No. 2,552,987 issued Mar. 26, 2002;
BANANA REPUBLIC FACTORY STORE Reg. No. 2,820,038 issued Mar. 2, 2004;
AIPO
BANANA REPUBLIC Reg. No. 46,750 issued Apr. 10, 2002;
IPA
BANANA REPUBLIC Reg. No. A559,704 issued July 15, 1991;
BANANA REPUBLIC Reg. No. A559,705 issued July 15, 1991;
BANANA REPUBLIC Reg. No. A559,706 issued July 15, 1991;
BANANA REPUBLIC Reg. No. A417,612 issued Oct. 31, 1991;
BANANA REPUBLIC Reg. No. A417,613 issued Oct. 31, 1991;
BANANA REPUBLIC Reg. No. A629,431 issued May 10, 1994;
BANANA REPUBLIC MODERN Reg. No. 750,771 issued July 24, 1998;
BANANA REPUBLIC Reg. No. 774,540 issued May 14, 1999;
BANANA REPUBLIC Reg. No. 797,908 issued June 21, 1999;
BANANA REPUBLIC Reg. No. 838,352 issued May 10, 2001;
BANANA REPUBLIC Reg. No. 885,374 issued Aug. 9, 2001;
BANANA REPUBLIC Reg. No. 1,028,132 issued Nov. 3, 2004;
BANANA REPUBLIC Reg. No. 995,975 issued Feb. 6, 2006;
BANANA REPUBLIC Reg. No. 1,099,615 issued Oct. 5, 2006;
CIPO
BANANA REPUBLIC Reg. No. 328,188 issued May 29, 1987;
BANANA REPUBLIC Reg. No. 333,181 issued Oct. 16, 1987;
BANANA REPUBLIC Reg. No. 448,969 issued Oct. 20, 1995;
BANANA REPUBLIC Reg. No. 482,257 issued Sept. 9, 1997;
BANANA REPUBLIC MODERN Reg. No. 548,246 issued July 17, 2001;
BANANA REPUBLIC Reg. No. 582,842 issued May 30, 2003;
BANANA REPUBLIC Reg. No. 582,957 issued June 3, 2003;
BANANA REPUBLIC Reg. No. 583,270 issued June 9, 2003;
BANANA REPUBLIC Reg. No. 583,531 issued June 11, 2003;
BANANA REPUBLIC Reg. No. 592,655 issued Oct. 20, 2003;
BANANA REPUBLIC Reg. No. 597,598 issued Dec. 16, 2003;
BANANA REPUBLIC Reg. No. 602,034 issued Feb. 12, 2004;
BANANA REPUBLIC Reg. No. 644,697 issued July 20, 2005;
BANANA REPUBLIC Reg. No. 715,384 issued May 29, 2008;
OHIM
BANANA REPUBLIC Reg. No. 27,037 issued Oct. 19, 1998;
BANANA REPUBLIC MODERN Reg. No. 699,025 issued Jan. 19, 2000;
BANANA REPUBLIC Reg. No. 1,097,716 issued Dec. 11, 2000;
BANANA REPUBLIC Reg. No. 1,674,811 issued July 9, 2001;
BANANA REPUBLIC Reg. No. 1,963,941 issued Mar. 15, 2002;
BANANA REPUBLIC Reg. No. 2,643,443 issued Sept. 5, 2003;
BANANA REPUBLIC Reg. No. 2,920,049 issued Mar. 8, 2004;
BANANA REPUBLIC Reg. No. 2,909,364 issued Mar. 31, 2004;
BANANA REPUBLIC Reg. No. 4,550,851 issued June 22, 2006.
The Panel finds that Complainant’s extensive trademark registrations provide substantial evidence of Complainant’s rights in the BANANA REPUBLIC mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant argues that Respondent’s <bananarepulic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark as the only changes are the omission of the letter “b” and the space between the terms of the mark and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that misspelling Complainant’s mark by omitting a single letter does not differentiate the disputed domain name from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark). The Panel also finds that the addition of the gTLD “.com” and the removal of the space are insignificant for the purposes of Policy ¶ 4(a)(i). See 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); see also 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).”). Therefore, the Panel finds Respondent’s <bananarepulic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must present a sufficient prima facie when alleging that Respondent lacks rights and legitimate interests in the disputed domain name. As Complainant has put forth an adequate prima facie case in this proceeding, the burden now transfers to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. Respondent’s default, however, allows the Panel to infer that Complainant’s allegations are true and uncontested and that Respondent does not possess rights and legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel elects, however, to consider all the evidence in the record in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the <bananarepulic.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Jasper Developments,” and Respondent has no association with Complainant and is not licensed by Complainant to use Complainant’s mark in the disputed domain name. The Panel finds that the failure of the WHOIS information to nominally link Respondent to the disputed domain name indicates that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant contends that Respondent’s <bananarepulic.com> domain name redirects Internet users to website featuring a listing of third-party links that are presumably pay-per-click. The Panel finds that appropriating Complainant’s mark in a domain name which resolves to such a directory site is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant asserts that Respondent’s registration of the
<bananarepulic.com> domain
name is typosquatting since the disputed domain name could easily be the result
of an unintentional typographical error in which one letter of Complainant’s
mark is omitted. The Panel finds that
Respondent’s engagement in typosquatting indicates that Respondent lacks rights
and legitimate interests in the <bananarepulic.com>
domain name according to Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has been the respondent in at least three other
UDRP proceedings in which the disputed domain names were transferred to the
respective complainants. See Troi
Torain v. Jasper Devs., FA 653324 (Nat. Arb. Forum Apr. 18, 2006); see also Centura Health Corp. v. Jasper
Devs., FA 751616 (Nat. Arb. Forum Aug. 24, 2006); see also Cabela’s, Inc. v. Jasper Devs. Pty Ltd, FA 1278819 (Nat.
Arb. Forum Sept. 29, 2009). Complainant
alleges that these previous UDRP proceedings in which Respondent was found to
have registered a domain name infringing on another’s mark are evidence of
Respondent’s pattern of such improper domain name registration and thus show
bad faith under Policy ¶ 4(b)(ii). The
Panel agrees with Complainant. See Westcoast Contempo Fashions Ltd. v.
Complainant argues that
Respondent’s <bananarepulic.com>
domain name resolves to a website advertising various third-party websites,
some of which are Complainant’s competitors within the clothing industry, in
the form of pay-per-click links. The
Panel finds Respondent’s attempts to encourage competition with Complainant
through misuse and unauthorized appropriation of Complainant’s mark is
disruptive to Complainant’s business and reveals bad faith registration and use
according to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v.
Complainant asserts that the links displayed at Respondent’s
<bananarepulic.com> domain
name are pay-per-click links that generate revenue for Respondent when
clicked. As many of the links relate to
third-parties doing business in the clothing industry like Complainant, the
links are both competing with Complainant’s business and likely to be of
greater interest to Internet users who find themselves at Respondent’s disputed
domain name instead of Complainant’s actual website. Respondent is thus using Complainant’s mark
in the disputed domain name to attract Internet users to Respondent’s own
website for commercial gain, which the Panel finds to be evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc.
v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided
links to Complainant's competitors and Respondent presumably commercially
benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel has previously found that Respondent is engaged in the practice of typosquatting through its registration of the confusingly similar <bananarepulic.com> domain name. The Panel finds that typosquatting is evidence in and of itself of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). See 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)); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds 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 <bananarepulic.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 4, 2010
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