Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch
Claim Number: FA1405001562139
Complainant is Gap Inc. and its subsidiary, Old Navy (Apparel), LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jiri Capcuch (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldnavvy.com>, registered with Go China Domains, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2014; the National Arbitration Forum received payment on May 30, 2014.
On June 2, 2014, Go China Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <oldnavvy.com> domain name is registered with Go China Domains, LLC and that Respondent is the current registrant of the name. Go China Domains, LLC has verified that Respondent is bound by the Go China Domains, 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 June 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@oldnavvy.com. Also on June 3, 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 June 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <oldnavvy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark.
2. Respondent does not have any rights or legitimate interests in the <oldnavvy.com> domain name.
3. Respondent registered and uses the <oldnavvy.com> domain name in bad faith.
B. Respondent failed to submit a Response in 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.
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.”).
The Panel finds that Complainant’s registration of the OLD NAVY mark with the USPTO and Czech Republic’s Copyright Office sufficiently proves that it has rights in the mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <oldnavvy.com> domain name adds an additional letter “v” to Complainant’s OLD NAVY mark. The Panel find that Respondent’s inclusion of an additional letter is irrelevant under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Respondent also omits the space and adds the generic top-level domain (“gTLD”) “.com.” The removal of spaces and addition of a gTLD does nothing to eliminate confusing similarity under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel finds that Respondent’s <oldnavvy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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); 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 states that Respondent has not been commonly known by the <oldnavvy.com> domain name, and is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that Respondent is identified as “Jiri Capcuch” in the WHOIS record. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <oldnavvy.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <oldnavvy.com> domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s disputed domain name leads to a webpage offering third-party links such as “Old Navy Womens Clothing,” “Children Clothing,” and “Clothing Online Shopping.” Past UDRP panels have held that a respondent’s use of a domain name to provide competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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). Thus, the Panel finds that Respondent is not using the <oldnavvy.com> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is a serial cybersquatter. Previous NAF and WIPO UDRP decision databases show that Respondent has engaged in a pattern of cybersquatting. See Time Warner Cable Inc. v. paulo / Jiri Capcuch, FA 1463778 (Nat. Arb. Forum Oct. 30, 2012); Victoria's Secret Stores Brand Management, Inc. v. Jiri Capcuch, FA 1430654 (Nat. Arb. Forum March 29, 2012); Associated Content Inc. v. Jiri Capcuch, FA 1281913 (Nat. Arb. Forum Oct. 12, 2009). Therefore, the Panel finds that the adverse prior UDRP determinations against Respondent support bad faith use and registration of the <oldnavvy.com> domain name under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Respondent displays pay-per-click advertising on the websites resolving from the <oldnavvy.com> domain name that compete with Complainant. Complainant asserts that the links provided divert potential customers from Complainant’s website to Respondent’s website, disrupting Complainant’s business. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel found that “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Thus, the Panel finds that Respondent’s use of the <oldnavvy.com> domain name disrupts Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii).
Respondent is using the <oldnavvy.com> domain name to attract and mislead consumers for its own profit. The Panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) found that “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” Thus, the Panel finds that Respondent is using the <oldnavvy.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent adds an additional letter “v” to Complainant’s OLD NAVY mark in the <oldnavvy.com> domain name, a classic example of typosquatting. Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii). 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).”).
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 <oldnavvy.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 2, 2014
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