The Gap, Inc. v. Hulmiho Ukolen
Claim Number: FA1306001507424
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Hulmiho Ukolen (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bananarepublci.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
On July 11, 2013, Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com confirmed by e-mail to the National Arbitration Forum that the <bananarepublci.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com registration agreement and 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 23, 2013, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of August 12, 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@bananarepublci.com. Also on July 23, 2013, the Finnish language 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 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
1. Complainant is a leading global clothing and clothing accessories retailer, providing customers with a range of fashion options from business and casual wear to athletic clothing available for both children and adults. Complainant has operated its retail stores since 1969, and the fame in its BANANA REPUBLIC mark has reached countries worldwide.
2. Complainant operates at the <bananarepublic.com> domain name.
3. Policy ¶ 4(a)(i)
a. Complainant registered the BANANA REPUBLIC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,347,849 registered July 9, 1985) in International Classes 18, 25, and 42, for tote bags and luggage, clothing, and retail store services, respectively.
b. Complainant also registered the BANANA REPUBLIC mark in Finland (e.g., Reg. No. 141,230 registered December 5, 1995) for International Classes 18, 25, and 42.
c. The <bananarepublci.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
4. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <bananarepublci.com> domain name.
i. Respondent had no intellectual property rights in the disputed domain name upon its registration of the domain.
ii. The WHOIS information suggests Respondent is known as an entity other than the trademark associated with Complainant.
iii. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's mark.
b. Respondent is using the disputed domain name to redirect Internet users to Complainant's own website through Complainant's affiliate program.
i. Respondent’s domain name violates Complainant’s affiliate agreement, which does not allow members to use domain names that incorporate, or are confusingly similar to registered marks.
ii. Respondent has breached the affiliate agreement in order to profit from with the receipt of click-through or affiliate fees.
5. Policy ¶ 4(a)(iii)
a. By registering a confusingly similar domain name while a member of Complainant’s affiliate program, Respondent has attempted to opportunistically benefit from its registration and use of the <bananarepublci.com> domain name at Complainant's expense.
b. Respondent had actual knowledge of Complainant’s rights in the Complainant’s trademark at the time Respondent registered the disputed domain name.
i. Respondent’s incorporation of a common misspelling of Complainant’s trademark urges a finding that Respondent had actual knowledge of Complainant’s rights in the mark.
ii. Respondent was also a member of Complainant’s affiliate program and thus must have known of Complainant and its trademark before Respondent registered the domain name.
c. Respondent has engaged in typosquatting.
6. Respondent registered the <bananarepublci.com> domain name
November 3, 2003.
Respondent did not submit a response to this proceeding.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Finnish, thereby making the language of the proceedings Finnish. After review of the applicable rules on language of the proceedings under the UDRP, the Panel finds:
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant established that it has rights to and legitimate interests in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name that contains Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant is a leading global clothing and clothing accessories retailer, providing customers with a range of fashion options from business and casual wear to athletic clothing available for both children and adults. Complainant claims rights in the BANANA REPUBLIC mark under Policy ¶ 4(a)(i). The Panel notes that Complainant provided evidence of its registration of the mark in numerous countries throughout the world, including the United States (e.g., Reg. No. 1,347,849 registered July 9, 1985) and Respondent’s native Finland (e.g., Reg. No. 141,230 registered December 5, 1995). The Panel finds that these trademark registrations establish Complainant’s rights in the BANANA REPUBLIC mark for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Grp., 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 urges the Panel to find that Respondent’s <bananarepublci.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark. Complainant notes that the disputed domain name transposes the letters “i” and “c” in Complainant’s mark while also affixing the generic top-level domain (“gTLD”) “.com.” The Panel notes that the disputed domain name also removes the space between words in Complainant’s mark. The Panel finds that none of these alterations is sufficient to distinguish the disputed domain and the Panel finds that Respondent’s <bananarepublci.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark pursuant to Policy ¶ 4(a)(i). See 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 Am. Int’l Grp., 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.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <bananarepublci.com> domain name. According to Complainant, Respondent had no intellectual property rights in that domain name when registering the domain at issue. Complainant further asserts that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's mark. Moreover, Complainant urges that the WHOIS information suggests Respondent is known as an entity other than the trademark associated with Complainant. The Panel notes that the WHOIS record lists Respondent as “Hulmiho Ukolen.” Given this evidence, the Panel finds that Respondent is not in fact commonly known by the <bananarepublci.com> domain name for the purposes of Policy ¶ 4(c)(ii). See 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also alleges that Respondent’s use of the <bananarepublci.com> domain name constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant claims that Respondent is using the disputed domain name to redirect Internet users to Complainant's own website through Complainant's affiliate program. Complainant complains that this use violates Complainant’s affiliate agreement, which does not allow members to use domain names that incorporate, or are confusingly similar to registered marks. Complainant urges that Respondent has purposely breached this affiliate agreement in order to profit from receipt of click-through or affiliate fees. If the Panel agrees with Complainant’s characterization of Respondent’s use of the disputed domain name and holds that Respondent’s use of the domain cannot be properly considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
While Complainant does not specifically allege any of the bad faith factors enumerated under Policy ¶¶ 4(b)(i)-(iv), the Panel notes that Paragraph 4(b) of the Policy is an illustrative list of factors indicating bad faith registration and use. Previous panels have found, and this Panel agrees, that the Panel may take into consideration the totality of the facts in determining bad faith and it may be found based on elements outside Policy ¶ 4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Complainant alleges that Respondent’s registration and use of the <bananarepublci.com> domain name while a member of Complainant’s affiliate program demonstrates bad faith within the purview of Policy ¶ 4(a)(iii). Complainant reasons that by registering a confusingly similar domain name while a member of Complainant’s affiliate program, Respondent has attempted to opportunistically benefit from its registration and use of the <bananarepublci.com> domain name at Complainant's expense. Complainant alleges that Respondent seeks to achieve commercial gain from this diversion through click-through and affiliate fees. The Panel finds that Respondent’s registration of a confusingly similar domain name to point that domain back to Complainant’s site in order to collect fees from Complainant supports findings of bad faith registration and use of the <bananarepublci.com> domain name under a Policy ¶ 4(a)(iii) analysis. See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).
Complainant contends that Respondent had actual knowledge of Complainant’s rights in the BANANA REPUBLIC trademark at the time Respondent registered the disputed domain name. Complainant urges that Respondent’s incorporation of a common misspelling of Complainant’s trademark in its domain name supports a finding that Respondent had actual knowledge of Complainant’s rights in Complainant’s mark. Complainant asserts that the fact that Respondent was a member of Complainant’s affiliate program provides further evidence that Respondent must have known of Complainant and its trademark before Respondent registered the <bananarepublci.com> domain name. The Panel agrees with Complainant that such circumstances support a finding of Respondent's actual knowledge and the Panel finds that Respondent registered the <bananarepublci.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant further contends that Respondent has engaged in typosquatting, which supports findings of bad faith registration and use in and of itself. The Panel notes that Respondent’s <bananarepublci.com> domain name consists entirely of Complainant’s BANANA REPUBLIC mark and changed the mark only by transposing the letters “c” and “i” in Complainant’s mark and removing the space between words in Complainant’s mark. The Panel finds that the disputed domain name reflects a common misspelling of Complainant’s mark, such that some Internet users are likely to arrive at Respondent’s <bananarepublci.com> domain when they in fact intended to visit Complainant’s <bananarepublic.com>. The Panel agrees and finds that Respondent engaged in typosquatting, conduct that supports findings of bad faith registration and use of the <bananarepublci.com> domain name under a Policy ¶ 4(a)(iii) analysis. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <bananarepublci.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 23, 2013.
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