Gap, Inc. v. Venkateshwara Distributor Private Limited.
Claim Number: FA1306001507132
Complainant is Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Venkateshwara Distributor Private Limited. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <olcnavy.com> and <oldnaevy.com>, registered with Tirupati Domains and Hosting Private Limited.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2013; the National Arbitration Forum received payment on June 27, 2013.
On June 28, 2013, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <olcnavy.com> and <oldnaevy.com> domain names are registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the names. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 July 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2013 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@olcnavy.com, postmaster@oldnaevy.com. Also on July 16, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant owns and uses the OLD NAVY mark in its business as a retail clothing and accessories store. Complainant sells t-shirts, shorts, pants, skirts, sweaters, jackets, dresses, and accessories, and it operates both retail and online stores around the world. Complainant owns trademark registrations for the OLD NAVY mark throughout the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,006,872 registered October 8, 1996), Cyprus’s Department of Companies and Official Receiver (“DCOR”) (e.g., Reg. No. 53,850 registered August 10, 1999), the German Patent and Trade Mark Office (“DPMA”) (e.g., Reg. No. 39,653,689 registered January 21, 1997), and India’s Office of the Controller-General of Patents, Designs, and Trademarks (“OCGPDT”) (e.g., Reg. No. 739,367 registered December 13, 1996). Complainant operates 3,000 stores in about ninety countries worldwide. Complainant has expended millions of dollars to promote its trademark through advertisements on a variety of different media.
Respondent registered the <olcnavy.com> domain name on November 20, 2006, and the <oldnaevy.com> domain name on April 5, 2008. Both of the disputed domain names are confusingly similar to the OLD NAVY mark, and they were registered well after Complainant’s first use and registration date for the OLD NAVY trademark. Respondent uses the domain names to redirect Internet users to a website displaying third-party hyperlinks, some of which lead to websites operated by competitors of Complainant. Respondent is not commonly known by either of the disputed domain names, has no intellectual property rights in the domain name, and does not demonstrate rights or legitimate interests in the domain name. Respondent registered and uses both the <olcnavy.com> and <oldnaevy.com> domain names in bad faith, as shown by its typosquatting Complainant’s mark to create the domain names, its click-through website to generate revenue and disrupt Complainant’s business, and its actual knowledge of Complainant’s rights in the mark. Respondent also uses the <olcnavy.com> domain name, specifically, to lead users to a website that causes a pop-up window to appear indicating that the visitor is a winner, and offers a prize in exchange for the visitor’s e-mail address, which constitutes a “phishing” venture. Respondent owns other domain names that appear to be typosquatted, which further demonstrates Respondent’s bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Gap, Inc. which list its address as San Francisco, CA, USA, and owns, uses, as well as has registered the OLD NAVY mark both domestically and abroad for retail clothing goods and services. Complainant has continuously used the mark since at least 1996 throughout the world in thousands of stores as well as via e-commerce at its <oldnavy.com> website.
Respondent is Venkateshwara Distributor Private Limited which list its address as Mumbai, Maharashtra, India. Respondent’s registrar’s address is also listed as Maharashtra, India. Respondent registered the <olcnavy.com> domain name on November 20, 2006, and the <oldnaevy.com> domain name on April 5, 2008.
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.
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.”).
Complainant claims to own rights in the OLD NAVY mark as a result of its numerous trademark registrations with various international authorities, including the USPTO (e.g., Reg. No. 2,006,872 registered October 8, 1996), Cyprus’s DCOR (e.g., Reg. No. 53,850 registered August 10, 1999), the German DPMA (e.g., Reg. No. 39,653,689 registered January 21, 1997), and India’s OCGPDT (e.g., Reg. No. 739,367 registered December 13, 1996). See Complainant’s Exhibits E and F. The Panel notes that Respondent appears to reside in India, and finds that because Complainant’s trademark registrations include registrations in both the United States and India, as well as multiple other countries, Complainant has demonstrated rights in its OLD NAVY mark in satisfaction 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).
Complainant argues that the <olcnavy.com> and <oldnaevy.com> domain names are confusingly similar to Complainant’s OLD NAVY mark, because both domain names consist of a slight misspelling of the mark. The Panel notes that the <olcnavy.com> domain name replaces the letter “d” in the mark with a “c,” and the <oldnaevy.com> domain name adds the letter “e.” Complainant further contends that both domain names include the generic top-level domain (“gTLD”) “.com,” and claims that the addition of a gTLD does not affect the confusing similarity to the mark. The Panel also notes that both domain names omit the spacing between the words of the OLD NAVY mark. The Panel finds that the <olcnavy.com> and <oldnaevy.com> domain names are confusingly similar to Complainant’s OLD NAVY mark for the purposes of 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 Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant sets forth the argument that Respondent is not commonly known by the disputed domain names, citing Respondent’s lack of trademark rights in the domain names and the WHOIS record, which suggests that Respondent is known by an entirely different name. Complainant further alleges that Respondent is not authorized in any way to use Complainant’s OLD NAVY mark or to associate itself with Complainant’s business. Previous panels have stated that a respondent will not be found to be commonly known by a domain name if it lacks permission to use the mark upon which the domain name is based or if the WHOIS information does not support such a finding. 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 that it is commonly known by the domain name); see also 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). The Panel finds that the record does not reflect that Respondent is commonly known by either of the <olcnavy.com> or <oldnaevy.com> domain names, as intended by Policy ¶ 4(c)(ii).
Complainant makes the contention that Respondent uses the <olcnavy.com> and <oldnaevy.com> domain names to host websites that redirect Internet users to a website containing hyperlinks to websites owned and operated by third-party entities, some of which are competitors of Complainant’s business. Complainant argues that Respondent receives pay-per-click fees by hosting the hyperlinks, and contends that such use fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial use of the domain names. The Panel notes that Complainant’s Exhibit H demonstrates that only the <oldnaevy.com> domain name resolves to a website that displays a series of hyperlinks. The Panel finds that operating a website that displays nothing more than third-party hyperlinks to various businesses’ websites, some of which compete with Complainant, does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <oldnaevy.com> domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant alleges in its Policy ¶ 4(a)(iii) section that Respondent uses the <olcnavy.com> domain name to direct Internet users to a website that purports to offer a “prize” in exchange for the visitor’s e-mail address, and claims that such use constitutes a “phishing” scheme. Previous panels have defined “phishing” as a method of improperly gaining Internet users’ personal information, and have concluded that phishing does not satisfy the Policy as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent fails to show that it has rights or legitimate interests in the <olcnavy.com> domain name under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant makes the allegation that Respondent currently owns domain name registrations for a multitude of domain names that incorporate famous marks belonging to other entities, and provides its Exhibit O as evidence to support its contention. Complainant also claims that Respondent has been involved in several UDRP disputes where Respondent was determined to have registered and used the domain names at issue in bad faith, and argues that those previous decisions support a finding of Respondent’s pattern of bad faith registration and use in the current case. See Orbitz Worldwide, LLC v. Venkateshwara Distrib. Private Ltd., FA 1483727 (Nat. Arb. Forum April 5, 2013); see also Prudential Ins. Co. of Am. V. Venkateshwara Distrib. Private Ltd., FA 1469497 (Nat. Arb. Forum Dec. 10, 2012). The Panel notes that evidence of domain name registrations outside the current dispute are not a basis to support a finding of bad faith as Respondent’s arrangement with other entities to register domain names using their respective marks is unknown; however, the Panel recognizes that the evidence of adverse UDRP decisions involving Respondent demonstrate that Respondent has an established pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Therefore, the Panel finds that an inference of bad faith is warranted under the circumstances with regard to Respondent’s registration of the <olcnavy.com> and <oldnaevy.com> domain names pursuant to Policy ¶ 4(b)(ii).
Complainant argues that Respondent disrupts Complainant’s business by hosting “click-through” websites through the disputed domain names, which divert customers away from Complainant and to third-party websites. The Panel notes that only the <oldnaevy.com> domain name resolves to a website offering competing hyperlinks. The Panel finds that Respondent’s efforts to redirect consumers away from Complainant’s website is evidence of Respondent’s disruptive bad faith registration and use of the <oldnaevy.com> domain name under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant claims that Respondent demonstrates bad faith registration and use by using the <oldnaevy.com> domain name to generate a profit by confusing Internet users with confusingly similar domain names in order to attract traffic to its websites. Complainant submits its Exhibit H as evidence to demonstrate that Respondent uses the <oldnaevy.com> domain name to host hyperlinks to both competing and non-competing entities. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. The Panel finds that Respondent’s registration and use of the <oldnaevy.com> domain name was an attempt to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv).
Complainant sets forth the argument that Respondent uses the <olcnavy.com> domain name to host a website enticing Internet users to exchange their e-mail addresses in exchange for a prize. Previous panels have stated that “phishing” is an attempt by a respondent to improperly gain personal, confidential, or sensitive information from visitors to a website operating under the guise of belonging to the complainant. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007) (“T”here is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). The Panel finds that operating a phishing scheme at the <olcnavy.com> domain name is evidence of Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant asserts that Respondent is engaged in typosquatting, shown by Respondent’s registration of domain names that reflect plausible misspellings of Complainant’s OLD NAVY mark. Complainant alleges that typosquatting is evidence of Respondent’s bad faith registration. Previous panels have found that when a respondent registered a domain name that reflected a typographical error of a known trademark, Respondent was engaged in typosquatting, and thus registered the domain name in bad faith. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”). The Panel finds that by registering the <olcnavy.com> and <oldnaevy.com> domain names, Respondent takes advantage of spelling errors related to Complainant’s OLD NAVY mark, and therefore registered the domain names in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <olcnavy.com> and <oldnaevy.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 28, 2013
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