The Gap, Inc. v. 齐燕杰 唐王中拓科技（北京）有限责任公司
Claim Number: FA1101001367655
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is 齐燕杰 唐王中拓科技（北京）有限责任公司 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oldnavyu.com>, <oldnavby.com>, <oldnasvy.com>, <oldfnavy.com>, <okldnavy.com>, <oildnavy.com> and <oldmnavy.com>, registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2011; the National Arbitration Forum received payment on January 14, 2011.
On January 17, 2011, Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp confirmed by e-mail to the National Arbitration Forum that the <oldnavyu.com>, <oldnavby.com>, <oldnasvy.com>, <oldfnavy.com>, <okldnavy.com>, <oildnavy.com> and <oldmnavy.com> domain names are registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp and that Respondent is the current registrant of the names. Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp has verified that Respondent is bound by the Xiamen Ename Network Technology Corporation Limited d/b/a Ename 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 January 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2011 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@oldnavyu.com, postmaster@oldnavby.com, postmaster@oldnasvy.com, postmaster@oldfnavy.com, postmaster@okldnavy.com, postmaster@oildnavy.com, and postmaster@oldmnavy.com. Also on January 25, 2011, 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 February 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <oldnavyu.com>, <oldnavby.com>, <oldnasvy.com>, <oldfnavy.com>, <okldnavy.com>, <oildnavy.com> and <oldmnavy.com> domain names are confusingly similar to Complainant’s OLD NAVY mark.
2. Respondent does not have any rights or legitimate interests in the <oldnavyu.com>, <oldnavby.com>, <oldnasvy.com>, <oldfnavy.com>, <okldnavy.com>, <oildnavy.com> and <oldmnavy.com> domain name.
3. Respondent registered and used the <oldnavyu.com>, <oldnavby.com>, <oldnasvy.com>, <oldfnavy.com>, <okldnavy.com>, <oildnavy.com> and <oldmnavy.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., markets and sells clothing and accessories through its subsidiaries, Old Navy LLC and Old Navy Inc. For the purposes of these proceedings the Panel elects to treat these entities as a single Complainant. Complainant conducts its clothing business under the OLD NAVY trademark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,414,675 issued December 19, 2000).
Respondent registered the <oldnavyu.com>, <oldnavby.com>, <oldnasvy.com>, <oldfnavy.com>, <okldnavy.com>, <oildnavy.com> and <oldmnavy.com> domain names between May 30, 2009 and August 22, 2009. Each of the disputed domain names resolves to a website featuring links to Complainant’s website and also to the websites of Complainant’s competitors.
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 asserts rights in the OLD NAVY mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,414,675 issued December 19, 2000). The Panel finds Complainant’s registration with a federal trademark authority to be sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant asserts that Respondent’s domain names are confusingly similar to its OLD NAVY mark. Each of Respondent’s domain names removes the space between the terms of Complainant’ mark in addition to inserting a single letter into the mark. Furthermore, Respondent added the generic top-level domain (“gTLD”) “.com” to each of the disputed domain names. Complainant alleges that Respondent’s actions have not resulted in unique domain names that fall outside the realm of confusing similarity to Complainant’s mark. The Panel agrees. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case in support of its contention that Respondent lacks rights and legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie showing which then shifts the burden to Respondent to show it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). Respondent failed to submit a response to these proceedings from which the Panel infers that Respondent lacks rights or legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names and that Respondent has not been authorized to use the OLD NAVY mark. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Furthermore, the Panel can find no evidence that would support a finding that Respondent is commonly known by the disputed domain names. Thus, the Panel determines that Respondent is not commonly known by the disputed domain names under ¶ 4(c)(ii) of the Policy. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the 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 the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent is using the disputed domain names to redirect Internet users to websites featuring links to the websites of Complainant and its competitors. The Panel presumes that Respondent receives click-through fees for this redirection. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that the disputed domain names are all common misspellings of the OLD NAVY mark which is evidence that Respondent has engaged in typosquatting. The Panel finds that typosquatting demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). 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”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s use of the disputed domain names and resolving websites disrupts its business and is evidence of bad faith registration and use under the Policy. By displaying links to competitors, Respondent disrupts Complainant’s business because Internet users looking for Complainant’s products may find, and end up purchasing, competing products through Respondent’s websites. The Panel finds that Respondent has disrupted Complainant’s business and that such use constitutes bad faith registration and use pursuant to Policy 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); 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 asserts that Respondent benefits commercially from redirecting Internet traffic to the websites resolving from the disputed domain names. The Panel infers that Respondent receives click-through fees from the hyperlinks associated with the disputed domain names. Additionally, the Panel finds that Internet users may be confused as to Complainant’s sponsorship of, and affiliation with the disputed domain names and resolving websites. Because of Respondent’s redirection, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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)(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); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
As established previously, Respondent has engaged in the practice of typosquatting based on its registration and use of the disputed domain names which are all common misspellings of Complainant’s mark. The Panel finds that typosquatting is evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii). See K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oldnavyu.com>, <oldnavby.com>, <oldnasvy.com>, <oldfnavy.com>, <okldnavy.com>, <oildnavy.com> and <oldmnavy.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 3, 2011
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