The Gap, Inc. v. G.A.P Adventures Inc.
Claim Number: FA1112001419226
Complainant is The Gap, Inc. ("Complainant"), represented by Bruce P. Keller of Debevoise & Plimpton LLP, New York, USA. Respondent is G.A.P Adventures Inc. (“Respondent"), represented by Pasquale A. Razzano of Fitzpatrick, Cella, Harper & Scinto, New York, USA.
The domain name at issue is <gapadventures.com>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David E. Sorkin, John J. Upchurch and Dennis A. Foster (chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2011; the National Arbitration Forum received payment on December 9, 2011.
On December 12, 2011, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <gapadventures.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the name. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, LLC. 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 December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2012 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@gapadventures.com. Also on December 13, 2011, 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.
On December 22, 2011, Respondent requested an extension of time to file its Response until January 23, 2012. Such request was granted by the Forum on December 22, 2011.
A timely Response was received and determined to be complete on January 20, 2012.
On January 25, 2012, an Additional Submission from Complainant was received and found to be in compliance with Supplemental Rule 7. Also, an Additional Submission from Respondent was received on January 30, 2012 and found to be compliant with Supplemental Rule 7. The Panel will consider both Additional Submissions in rendering its decision below.
On January 30, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David E. Sorkin, John J. Upchurch and Dennis A. Foster (chair) as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
· Founded as a clothing store in 1969, Complainant is a United States of America company that now sells billions of dollars worth of merchandise annually throughout the world. Currently, it has approximately 1,430 branded stores worldwide and is one of the world's leading retail chains.
· Complainant's "Gap" brand has become an American cultural icon, which receives considerable unsolicited media coverage on an international basis in motion pictures, television and magazines. In addition, Complainant's worldwide advertising budget in 2010 alone amounted to USD $516 Million, gaining it a ranking of 90th place among the leading advertisers in the United States.
· Complainant owns over 100 valid registrations for its GAP and related marks with the United States Patent and Trademark Office ("USPTO").
· Complainant owns the domain name, <gap.com>, and has used it in commerce since 1997.
· In 2006, Complainant filed a lawsuit against Respondent in Canadian federal court alleging that Respondent's G.A.P ADVENTURES mark infringed upon Complainant's trademark rights. Ownership of the disputed domain name is not addressed, and a ruling in the case is still pending.
· Also, in 2007, Complainant sued Respondent in a United States federal court for trademark infringement relative to commerce in the United States. In July 2011, the court issued an injunction barring Respondent from using "Gap," "GAP,” "G.A.P." or "G.A.P," whether with or without periods or other punctuation marks, and whether as a separate mark or word or as a portion of a composite mark or word, for any self-identifying purpose, including as part of a domain name. While the court did not address specifically the disputed domain name, the court noted that Respondent had been aware, throughout its history, that customers associated, and were likely to associate, Respondent's name with Complainant's trademarks.
· Respondent registered the disputed domain name without authorization from Complainant, but with the knowledge of Complainant's trademarks, per the testimony of Respondent's co-founder.
· The disputed domain name, <gapadventures.com>, is confusingly similar to the GAP mark. The mark is incorporated entirely within the name, and the addition of the gTLD ".com" is irrelevant. Moreover, the addition of the generic term "adventures" does nothing to mitigate the similarity.
· Respondent has no rights or legitimate interests in the disputed domain name. Respondent has recently re-branded itself as "G Adventures," and thus cannot be called by its former name, "G.A.P Adventures," pursuant to any contention that it is commonly known as the disputed domain name.
· Despite the injunction issued by the United States federal court, Respondent uses the disputed domain name to resolve to its principal domain name, <gadventures.com>. As such, Respondent is attempting to benefit illegitimately from a presumed association with Complainant's famous mark. Such infringing use cannot be considered a bona fide offering of goods or services or a legitimate use of any kind. As further evidence of Respondent's illegitimate intentions, Respondent registered the domain name, <gap.ca>, in 1995 as a prior bad faith effort to infringe upon Complainant's trademark.
· Respondent registered and is using the disputed domain name in bad faith. Complainant's GAP mark was already world famous at the time of Respondent's founding (1990) and when Respondent registered the name (1998). At the time of such registration, Respondent was well aware that consumers confused Respondent's business with that of Complainant.
· For commercial gain, Respondent seeks to lure internet users to its website due to the likelihood that those users will be confused into believing that there is an association with Complainant and its mark.
· The injunction issued in the case between Complainant and Respondent, heard in the United States federal court, applies expressly only in the United States. Moreover, it did not address ownership of the disputed domain name, and Complainant's failure to include any claim with respect to that issue in that venue mitigates its attempt to assert such a claim in these UDRP proceedings.
· Adjudication of Complainant's Canadian action is still pending, meaning that the issue of likelihood of confusion between trademarks has not yet been decided. Furthermore, that action brings Respondent's domain name, <gap.ca>, into dispute while deliberately excluding consideration of the disputed domain name. As Complainant evidently does not believe it should challenge (or could prevail in a challenge of) Respondent's ownership of the disputed domain name in that more rigorous forum, Complainant should not be allowed to make such a challenge in this forum.
· In any event, the Panel should not rule on the merits of this case when the previously noted Canadian court will be given a much fuller record upon which to sort out the various trademark and domain name claims between the parties.
· Respondent was formed in 1990 based on the travels of its co-founders. It now generates annual revenues of C $140 Million - USD $17 Million coming from United States customers –having received international recognition and awards.
· Contrary to any testimony by his now embittered co-founder, the principal founder of Respondent did not conceive of or finally select the original name of Respondent, "G.A.P Adventures," with the knowledge of Complainant's stores in Vancouver or Toronto. "G.A.P" was an acronym for "Great Adventure People,”and Respondent sought to fill a "gap" in travel services with respect to affordability.
· Respondent's business licenses and incorporation filings were approved in Canada. Respondent has never used the separate word "gap" in any way to trade on Complainant's trademarks.
· Although Respondent had opened a travel office in Toronto in 1993 and Complainant learned of Respondent as early as 1994, it was only after Respondent opened a few concept stores in the United States and Canada starting in 2005 that Complainant began litigating against Respondent.
· In 1998, years after its inception, Respondent decided to register the disputed domain name to assist in marketing its tours. At about the same time, Complainant attempted to acquire the domain name, <gap.ca>, from Respondent, but made no offer or demand with respect to the disputed domain name. Complainant actually used Respondent's possession of the disputed domain name as an argument to persuade Respondent to relinquish the former domain name.
· None of Complainant's trademarks relate to travel services, and "gap" is a common word. As a common word, trademark protection should be minimal, especially since the additional term, "adventures," does not relate to Complainant's business. Therefore, the disputed domain name is not confusingly similar to any of Complainant's marks.
· Respondent has rights and legitimate interests in the disputed domain name. For at least twelve years, Respondent has used the disputed domain name in connection with travel tours, a bona fide offering of goods or services. Furthermore, after operating and advertising for years in 100 countries or more, Respondent has been commonly known as "gap adventures," which corresponds directly to the disputed domain name. While Respondent has discontinued use of the name "G.A.P Adventures" in the United States as ordered by a court ruling, Respondent continues, at least temporarily, to use that name in other countries.
· The disputed domain name was not registered in bad faith. Respondent did not intend to gain commercially from confusion between the name and Complainant's mark. Mere anecdotal evidence of some minimal consumer confusion does not sustain a finding of such intent.
· Respondent is not maintaining the disputed domain name in bad faith. During the twelve years since registration of the disputed domain name, Respondent has increased its business threefold. There is no evidence that internet users are not seeking Respondent's services through the name, as opposed to being confused about whether the name is associated with Complainant - even if users are re-directed to Respondent's new domain name.
· Respondent's knowledge of Complainant's marks, even at the date of disputed domain name registration, does not necessarily constitute bad faith. Moreover, Complainant filed this claim twelve years after its knowledge of such registration, demonstrating that Complainant does not really believe that the name was registered and is being used in bad faith.
· Complainant is guilty of an attempt at reverse domain name hijacking. Complainant has brought this claim in bad faith, after it failed to assert a similar claim in court when it had ample opportunity to do so. Complainant is attempting to use these proceedings to obtain what it could not obtain through court proceedings, where a more thorough examination of evidence and competing rights was available.
· This UDRP proceeding is proper because transfer of the disputed domain name was never at issue in either the United States or Canadian court proceedings as referred to above. While res judicata is inapplicable to this case, great weight as to the conclusions reached in the former court proceedings should be accorded in this proceeding.
· In line with the findings in the United States court case, Respondent's contentions with respect to good faith, non-infringement and legitimate interests should be disregarded.
· Any goodwill associated with Respondent's use of its name or the disputed domain name results solely from Respondent's infringing use of those names relative to Complainant's trademarks.
· Because Complainant has put forth sufficient evidence to sustain its position on all of the Policy elements, it cannot be found guilty of reverse domain name hijacking. Moreover, any alleged delay in bringing this claim is not evidence of Complainant's bad faith.
· Failure to consider this case due to a related court case would negate the UDRP process as a mutually non-exclusive alternative for domain name dispute resolution.
· Complainant would have the Panel incorrectly apply the United States court ruling to Respondent's trademark rights throughout the world. Through eight years of operations, during which Complainant failed to raise any objection, Respondent achieved common law rights in its G.A.P ADVENTURES mark in jurisdictions around the world.
· Complainant is attempting through this proceeding to gain an unfair advantage with respect to the case brought against Respondent in the Canadian court, which is scheduled to go to trial shortly.
· The principal of res judicata should apply to this case, because the same claims were made in formal court proceedings, if not the same relief sought.
· Under the UDRP, bad faith and legitimate interests are separate considerations, and findings by a court of bad faith does not necessarily negate a finding of legitimate interests. The cases cited in the Complaint for the proposition that Respondent lacks legitimate interests in the disputed domain name are not applicable to the facts of this case.
· Though the UDRP offers a mutually non-exclusive alternative to court proceedings in resolving domain name disputes, panels are not required to rule on every UDRP claim brought when they believe an existing court proceeding is preferable.
Complainant, The Gap, Inc., is a large United States retailer of clothing and related goods operating through more than 1,400 stores worldwide and generating billions of dollars in revenues annually. It owns numerous registrations for its GAP trademark, including with the USPTO (e.g., Registration No. 1055151; issued December 28, 1976).
Founded in 1990, Respondent, G.A.P Adventures, is an established Canadian travel service company, with annual sales in excess of C$100 Million. Respondent owns the disputed domain name, <gapadventures.com>, which was registered on November 19, 1998. The disputed domain name resolves to another of Respondent's domain names, <gadventures.com>, which offers travel services.
Complainant sued Respondent in a United States federal court for trademark infringement, and obtained an injunction issued in July 2011 that prohibits Respondent from using the various combinations of the letters, "g," "a" and "p," in certain circumstances pertaining to trademarks and business uses within the United States. The order stemming from that case did not affect the ownership of the disputed domain name. Complainant has also filed a similar action against Respondent with a Canadian federal court, a case which is still pending at the time of this proceeding.
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.
The Panel notes that both Complainant and Respondent are well established companies that have been engaged, or are engaged, in complex United States and Canadian federal court litigation involving their various claims to trademark rights as those rights might affect, among other more significant issues, ownership of the disputed domain name.
According to paragraph 18(a) of the Rules, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the Complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision. In formulating its decision, the Panel is cognizant that the Policy is not a process designed to render decisions with respect to domain name disputes that may be subject to relatively complex, competing trademark rights. Instead, as stated in paragraph 4.1(c) of the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999), the "…[P]olicy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of 'abusive registrations.'"
Given the stature of the parties and the extent of litigation noted above, the Panel finds that the issue before it is part of a broader trademark dispute between the parties, and not a narrow case of abusive registration. As a result, the Panel believes that the court proceedings referred to above, and not a UDRP proceeding, are the proper fora in which to resolve the dispute presented in this case. See Edelgard & Horst Liebl v. Drug-Aware Ltd, FA 1395617 (Nat. Arb. Forum Aug. 8, 2011). Therefore, within the discretion granted it under paragraph 18(a) of the Rules, the Panel concludes that it is appropriate to terminate these proceedings and to dismiss the Complaint with prejudice.
The Panel believes that dismissal should be with prejudice because the underlying trademark and business disputes between the parties are beyond the scope of the UDRP and are being addressed in courts of competent jurisdiction. See Autoboss Tech., Inc. v. Cardiag cardiag / Cardiag Inc., FA 1405219 (Nat. Arb. Forum Sept. 23, 2011) (dismissing the case with prejudice, while stating "…the Panel concludes that this is a business or commercial dispute between two companies that falls outside the scope of the UDRP"); see also Fuze Beverage, LLC v. CGEYE, Inc. c/o Thomas Siedleczka, FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (finding dismissal with prejudice appropriate where, "It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address").
For all the foregoing reasons, the Complaint is denied with prejudice.
David E. Sorkin, Panelist John J. Upchurch, Panelist
Dated: February 13, 2012
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