GAP INC and its subsidiary, OLD NAVY (APPAREL), LLC v. Admin Domain / Above.com Domain Privacy
Claim Number: FA1405001557188
Complainant is GAP INC and its subsidiary, OLD NAVY (APPAREL), LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Admin Domain / Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldnavyy.com>, registered with DNC Holdings, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 5, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <oldnavyy.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 May 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2014 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@oldnavyy.com. Also on May 5, 2014, 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 May 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Complainant owns the OLD NAVY mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,055,347, registered April 22, 1997).
ii. Complainant uses the mark in connection with retail store services for clothes and accessories.
iii. Complainant has exerted significant effort in advertising and promoting the OLD NAVY mark such that it has garnered significant recognition and consumer appeal.
iv. Complainant’s online operation is directed through the oldnavy.com domain name.
v. The <oldnavyy.com> domain name is confusingly similar to the OLD NAVY mark.
vi. Respondent has not been commonly known by the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
vii. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the disputed domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites.
viii. The disputed domain name resolves to a website advertising links that compete with Complainant. The links divert Internet users from Complainant, which disrupts Complainant’s business.
ix. Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain. Respondent’s bad faith is demonstrated by Respondent’s use of the domain name in connection with generating revenue as a click through website.
x. Respondent had actual knowledge of Complainant’s rights in the OLD NAVY mark at the time the disputed domain name was registered.
xi. Respondent’s typosquatting behavior is evidence of bad faith.
xii. Respondent registered the <oldnavyy.com> domain name on April 30, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the OLD NAVY mark. Respondent’s domain name is confusingly similar to Complainant’s OLD NAVY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <oldnavyy.com> domain name, and that Respondent registered and uses the 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 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.”).
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: GAP Inc and Old Navy (Apparel), LLC. Complainants urge Old Navy (Apparel) LLC is a subsidiary company of Gap Inc, and that Old Navy was established in 1994 by GAP Inc.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
Accordingly, the Panel finds the Complaint is sufficient to establish a sufficient nexus or link between the Complainants; therefore both complaining parties shall be treated as a single entity in this proceeding. Hereafter both Complainants shall be referred to as “Complainant.”
Complainant uses the OLD NAVY mark in connection with retail store services for clothes and accessories. Complainant urges that it has exerted significant effort in advertising and promoting the OLD NAVY mark such that it has garnered significant recognition and consumer appeal. Further, Complainant’s online operation is directed through the <oldnavy.com> domain name. Complainant owns the OLD NAVY mark through its trademark registration with the USPTO (e.g., Reg. No. 2,055,347, registered April 22, 1997). The WHOIS record indicates Respondent operates out of Australia. A complainant does not need to hold trademark registration in the jurisdiction within which the respondent resides in order to satisfy Policy ¶ 4(a)(i); instead, a valid trademark with any governmental trademark authority is sufficient. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). As Complainant has demonstrated valid registration of the OLD NAVY mark with the USPTO, the Panel finds that Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant argues the <oldnavyy.com> domain name is confusingly similar to the OLD NAVY mark. Specifically, The disputed domain name includes the OLD NAVY mark in full, with the addition of a single letter “y,” and the generic top-level domain (“gTLD”) “.com.” The domain name also eliminates the space in the mark. These minor alterations are insufficient to distinguish the domain name from the incorporated mark. 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 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).”). Accordingly, the Panel finds that the <oldnavyy.com> domain name is confusingly similar to the OLD NAVY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has not been commonly known by the disputed domain name. Further, Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Respondent did not submit a response in this matter and therefore has failed to confront these contentions. The WHOIS record indicates that “Admin Domain / Above.com Domain Privacy” is the registrant of record. In light of the available evidence, the Panel holds Respondent is not commonly known by the <oldnavyy.com> domain name under Policy ¶ 4(c)(ii). See 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).
Complainant additionally argues that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business, and that Respondent presumably receives pay-per-click fees from the linked websites. To substantiate this contention, Complainant has provided a screenshot of the disputed landing page for the Panel’s consideration. The landing page promotes the links “Oldnavy,” “Kids Clothing Stores,” “Mens Dress Clothing,” and others. Respondent’s use of the disputed domain name to promote links to third-party websites from which Respondent likely profits does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (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).”).
Complainant further alleges that Respondent has engaged in typosquatting, which further demonstrates lack of rights and legitimate interests. The disputed domain name differs from the OLD NAVY mark by a single letter, namely the addition of a second “y” at the end of the mark. Because Respondent’s registration of the disputed domain name amounts to typosquatting, this is further evidence that Respondent lacks rights and legitimate interests in the subject domain name. See 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that the disputed domain name resolves to a website advertising links that compete with Complainant. Complainant further asserts the links divert Internet users from Complainant’s own website, which disrupts Complainant’s business. Complainant has included a screenshot of the landing page at issue, which promotes links including “Oldnavy,” “Kids Clothing Stores,” and “Mens Dress Clothing.” In Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007), the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the panel found the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). The Panel agrees that the promotion of the aforementioned links disrupts Complainant’s business and is therefore evidence of Complainant’s bad faith under Policy ¶ 4(b)(iii).
Next, Complainant argues that Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve commercial gain. Specifically, Complainant urges that Respondent’s bad faith is demonstrated by Respondent’s use of the domain name in connection with generating revenue as a click through website. The Panel agrees. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Accordingly, the Panel finds that Respondent’s registration and use of the disputed domain name supports a finding of bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had knowledge of Complainant’s rights in the OLD NAVY mark at the time the disputed domain name was registered. In support of this claim, Complainant points out that the landing page at issue promotes a link entitled “Oldnavy,” which notably is Complainant’s mark correctly spelled. This demonstrates that Respondent had actual knowledge of Complainant’s mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Because Respondent had actual knowledge of Complainant’s rights in the OLD NAVY mark at the time of registration, Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Lastly, Complainant urges that Respondent’s typosquatting behavior is evidence of bad faith. The <oldnavyy.com> domain name differs from the OLD NAVY mark by a single letter, namely the addition of a second “y.” This constitutes typosquatting which is evidence of bad faith registration and use. 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).”). Because the Panel agrees that Respondent’s misspelling of the OLD NAVY mark amounts to typosquatting, the Panel finds this as additional evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
The Panel finds 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 <oldnavyy.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 9, 2014
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