Gap, Inc. v. Callum Macgregor / General Delivery
Claim Number: FA1407001569235
Complainant is Gap, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Callum Macgregor / General Delivery (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bnanarepublic.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com.
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 July 11, 2014; the National Arbitration Forum received payment on July 11, 2014.
On July 18, 2014, Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com; confirmed by e-mail to the National Arbitration Forum that the <bnanarepublic.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 has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd Dba Hebeidomains.Com 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 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@bnanarepublic.com. Also on July 25, 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 August 20, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant holds registrations of the BANANA REPUBLIC mark with the United States Patent and Trademark Office ("USPTO"). Complainant uses the mark for online retail services relating to fashion, clothing, and accessories. The <bnanarepublic.com> domain name is confusingly similar to the BANANA REPUBLIC mark as it is a mere misspelling.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <bnanarepublic.com> domain name as demonstrated by the WHOIS record, nor is Respondent authorized to use the mark. Respondent uses the disputed domain name to feature generic links to third-party websites, some of which compete with Complainant.
3. The <bnanarepublic.com> domain name is being used in bad faith as demonstrated by six separate grounds. First, Respondent has made the disputed domain name for sale. Second, Respondent is a recalcitrant typosquatter as demonstrated by prior adverse UDRP decisions. Third, Respondent uses the disputed domain name to promote links that compete with Complainant thereby disrupting Complainant’s own operation. Fourth, Respondent attempts to improperly profit by confusing users as to Complainant’s affiliation with the disputed domain name and resolving page. Fifth, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. And finally, the disputed domain name is an example of typosquatting, which is itself evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Gap, Inc. of San Francisco, CA, USA. Complainant is the owner of domestic and international registrations for the mark BANANA REPUBLIC which it has used continuously since at least as early as 1985, in connection with the provision of goods and services in the fields of clothing and accessories.
Respondent is Callum Macgregor / General Delivery, of Scotland, United Kingdom. Respondent’s registrar’s address is listed as Shanghai, China. The disputed domain name was registered on or about November 3, 2009.
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: Redaction of Respondent’s Identity
The FORUM received an e-mail from Respondent in which Respondent claimed he/they never registered the domain name at issue and that the wrong e-mail address must have been used. The Panel notes that the WHOIS record lists the same e-mail address as the contact for the registrant at issue. The Panel further notes that while Respondent’s assertions claim that the Complaint is misdirected the Respondent stopped short of claiming to be a victim of identity theft. Furthermore there are numerous UDRP decisions in which the Respondent has been named. The Panel here chooses not to redact Respondent’s personal information from the decision. The Panel finds there is insufficient evidence to support an assertion of any victimization of Respondent(s), therefore the decision should be published in its normal manner. According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” The instant proceeding is not an exceptional case.
Complainant claims ownership of the BANANA REPUBLIC mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,347,849, registered July 9, 1985). Complainant uses the mark for online retail services relating to fashion, clothing, and accessories. Prior panels have found trademark registrations are sufficient under Policy ¶ 4(a)(i) regardless of whether the respondent resides in the same jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction), see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel here finds that Complainant’s registration of the BANANA REPUBLIC mark with the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant argues the <bnanarepublic.com> domain name is confusingly similar to the BANANA REPUBLIC mark. Complainant contends that the domain name is comprised of a misspelling of the mark plus the affixation of the generic top-level domain name (“gTLD”) “.com.” The Panel notes that the disputed domain name eliminates the first “a” in “banana” as well as the space between the two-word mark. Prior panels have found that such alterations are insufficient to negate confusing similarity. See HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”); see also CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter). The Panel here finds that the <bnanarepublic.com> domain name is confusingly similar to the BANANA REPUBLIC mark pursuant 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 contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant further asserts that Respondent is not commonly known by the <bnanarepublic.com> domain name as demonstrated by the WHOIS record, and that it has not authorized Respondent’s use of the mark. The Panel notes that the WHOIS record identifies “Callum Macgregor / General Delivery” as the registrant. Based on the lack of evidence to the contrary, the Panel finds that Respondent is not commonly known by the <bnanarepublic.com> domain name pursuant to 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 asserts that Respondent uses the disputed domain name to feature generic links to third-party websites, some of which compete with Complainant. Complainant presumes that Respondent generates revenue from the linked pages. The Panel notes the disputed links include “Banana Republic,” “Blue Jeans,” “Designer Clothing,” and “Polo Shirts.” Complainant argues that such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The panel in Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) held that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business.” The Panel here finds that Respondent’s use of the disputed domain name in connection with pay-per-click links promoting competing products does not constitute 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).
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.
First, Complainant argues that Respondent has made the disputed domain name for sale, which evinces bad faith. The Panel notes that Complainant has included a screenshot detailing the attempted sale of the dispute domain name for $4,750. Prior panels have found that the attempt to sell a disputed domain name can lead to a finding of bad faith in certain circumstances. For example, in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) the panel concluded that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name. The Panel here finds that the listed sale price exceeds the out-of-pocket costs and therefore justifies a finding of bad faith under Policy ¶ 4(b)(i).
Second, Complainant argues that Respondent is a recalcitrant typosquatter as demonstrated by prior adverse UDRP decisions. Complainant cites to several cases in which Respondent was found to have registered and used the disputed domain names in bad faith: Baylor Univ. v. Callum Macgregor, FA 1340159 (Nat. Arb. Forum September 23, 2010); Citigroup Inc. v. Callum Macgregor, FA 1381321 (Nat. Arb. Forum May 2, 2011); State Farm Mut. Auto. Ins. Co. v. Callum Macgregor, FA 1345375 (Nat. Arb. Forum October 20, 2010). In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) the panel found bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants. The Panel here finds that previous UDRP decisions against Respondent inform the present decision and that Respondent’s past actions justify a finding of bad faith under Policy ¶ 4(b)(ii) in the present case.
Third, Complainant contends that Respondent uses the disputed domain name to promote links that compete with Complainant thereby disrupting Complainant’s own operation. The Panel again notes that the disputed domain name resolves to a page featuring links to “Banana Republic,” “Blue Jeans,” “Designer Clothing,” and “Polo Shirts.” The Panel finds that such use disrupts Complainant’s business and warrants a finding of bad faith pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“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).”).
Complainant further argues that the disputed domain name is an example of typosquatting, which is itself evidence of bad faith. The Panel again notes that the only difference between the <bnanarepublic.com> domain name and the mark is the spacing and deletion of the first letter “a” in the BANANA REPUBLIC mark. The panel in Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) explained 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 here finds that Respondent’s behavior amounts to typosquatting which is additional evidence of Respondent’s bad faith pursuant 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 <bnanarepublic.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 3, 2014
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