The Gap, Inc. v. Taranga Services Pty Ltd c/o Domain Admin
Claim Number: FA1006001332400
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com>, registered with MONIKER ONLINE SERVICES, INC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2010.
On July 6, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names are registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the names. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@bananarepblic.com, postmaster@bananarepubilc.com and postmaster@bananareublic.com by e-mail. Also on July 7, 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 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names are confusingly similar to Complainant’s BANANA REPUBLIC mark.
2. Respondent does not have any rights or legitimate interests in the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names.
3. Respondent registered and used the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap Inc., owns the clothing and accessory
store that operates under its BANANA REPUBLIC mark. Complainant’s BANANA REPUBLIC stores opened
in 1978 and now operates over 500 stores in the
Respondent, Taranga Services Pty Ltd c/o Domain Admin, registered the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names on June 27, 2004 and February 2, 2005. Respondent’s disputed domain names resolve to websites that feature a search engine and sponsored hyperlinks to Complainant’s official websites and to the websites of Complainant’s competitors.
Complainant submits evidence to show that Respondent has been the respondent in previous UDRP proceedings in which Respondent was ordered to transfer the disputed domain names to the respective complainants. See Frederick’s of Hollywood Group, Inc. v. Domain Admin c/o Taranga Srvs. Pty. Ltd., FA 1301302 (Nat. Arb. Forum Feb. 17, 2010); see also Capital One Fin. Corp. v. Domain Admin a/k/a Taranga Srvs. Pty Ltd., FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Avid Dating Life, Inc. v. Taranga Srvs. Pty Ltd. c/o Domain Admin, FA 1307872 (Nat. Arb. Forum April 6, 2010).
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 established rights in its BANANA REPUBLIC mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,347,849 issued July 9, 1985) and IPONZ (e.g., Reg. No. 193,122 issued May 12, 1989). 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 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 argues that the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names are confusingly similar to Complainant’s BANANA REPUBLIC mark. Complainant argues that each domain name contains a misspelled version of its mark by omitting the letters “u” or “p” or transposing the letters “l” and “i.” Complainant also contends that previous panels have determined that deleting the space between the terms of a mark and the addition of a generic top-level domain (“gTLD”) such as “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). 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 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 Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have rights and legitimate interests in the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names. Complainant is required to produce a prima facie case in support of such allegations. Upon Complainant’s production of a prima facie case the burden shifts to Respondent to show that it possesses rights and legitimate interests in the domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has established a prima facie case in support of its allegations, and that the burden of proof has transferred to Respondent. Due to Respondent’s failure to respond to these proceedings, the Panel finds that it may accept as true the allegations of Complainant. 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 evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the domain names under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain names or legitimately affiliated with Complainant in any way. The WHOIS information for the disputed domain names identifies “Taranga Services Pty Ltd c/o Domain Admin” as the registrant and Respondent has not come forward with any information to show it is commonly known by the domain names. Therefore, the Panel finds that Respondent is not commonly known by the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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 of that it is commonly known by the disputed domain name); 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).
Complainant argues that Respondent is using the disputed
domain names to resolve to websites that feature a search engine and display
sponsored hyperlinks to Complainant’s official websites as well the websites of
Complainant’s competitors. The Panel
finds that such use is 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
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 Wal-Mart Stores, Inc. v.
Power of Choice Holding Co., FA
621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of
domain names confusingly similar to the complainant’s WAL-MART mark to divert
Internet users seeking the complainant’s goods and services to websites
competing with the complainant did 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)).
Respondent’s <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names contain misspelled versions of Complainant’s BANANA REPUBLIC mark. Previous panels have determined that respondents who use easily misspelled versions of a trademark within a domain name have engaged in typosquatting, and that such use is evidence that the respective respondents lacked rights and legitimate interests in the domain names. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). This Panel finds that Respondent’s registration of the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names is evidence of typosquatting and further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant submits evidence to show that Respondent has
been the respondent in previous UDRP proceedings in which Respondent was ordered
to transfer the disputed domain names to the respective trademark holders. See
Frederick’s of Hollywood Group, Inc. v. Domain Admin c/o Taranga Srvs. Pty.
Ltd., FA 1301302 (Nat. Arb. Forum Feb. 17, 2010); see also Capital One Fin. Corp. v. Domain Admin a/k/a Taranga Srvs. Pty
Ltd., FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Avid Dating Life, Inc. v. Taranga Srvs. Pty Ltd. c/o Domain
Admin, FA 1307872 (Nat. Arb. Forum April 6, 2010). Complainant contends that such evidence is
proof that Respondent is a pattern cybersquatter and has registered and used
the <bananarepblic.com>, <bananarepubilc.com>
and <bananareublic.com> domain names in bad faith pursuant
to Policy ¶ 4(b)(ii).
The Panel agrees and finds that Respondent’s past engagement in the
registration and use of trademark infringing domain names is evidence of bad
faith registration and use under Policy ¶ 4(b)(ii) in
the instant proceeding. Further, the
Panel finds that Respondent’s registration and use of three trademark
infringing domain names in this case is also evidence that Respondent
registered and used the domain names in bad faith under Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Complainant has submitted evidence to show that Respondent’s
<bananarepblic.com>, <bananarepubilc.com>
and <bananareublic.com> domain names resolve to websites
that feature advertisements and third-party hyperlinks to both Complainant’s
official websites and to the websites of Complainant’s competitors. The Panel finds that such use of the domain
names is evidence that Respondent registered and is using the domain names 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used the disputed domain name to operate a commercial search engine
with links to the complainant’s competitors).
Complainant contends that Respondent receives click-through fees for the third-party hyperlinks that are displayed on the websites that resolve from the disputed domain names. Complainant argues that by using commonly misspelled versions of Complainant’s mark to profit by diverting Internet users to competing businesses that Respondent has registered and used the <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names in bad faith. The Panel agrees and finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, and that such use is further evidence that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See supraRed Hat, Inc. v. Haecke; see also 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)).
The Panel previously determined that Respondent’s
registration and use of the <bananarepblic.com>, <bananarepubilc.com>
and <bananareublic.com> domain names constitutes
typosquatting. Previous panels have
found that registration and use of a commonly misspelled version of a
complainant’s trademark in a domain name is evidence that the respondents
registered and used the domain names in bad faith. See Canadian Tire Corp. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22,
2003) (finding the respondent registered and used the domain name in bad
faith because the respondent “created ‘a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the Respondent’s web site or location’. . . through Respondent’s persistent
practice of ‘typosquatting’”); see also 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). Therefore, the
Panel finds that Respondent registered and used the disputed domain names in
bad faith pursuant to 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 <bananarepblic.com>, <bananarepubilc.com> and <bananareublic.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 2, 2010
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