Gap, Inc. and its subsidiaries Banana Republic (Apparel), LLC and Banana Republic (Item), Inc. v. Jan Cerny
Claim Number: FA1702001718980
Complainant is Gap, Inc. and its subsidiaries Banana Republic (Apparel), LLC and Banana Republic (Item), Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jan Cerny (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bananareupblic.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
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 Forum electronically on February 24, 2017; the Forum received payment on February 24, 2017.
On February 28, 2017, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <bananareupblic.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 March 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2017 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@bananareupblic.com. Also on March 1, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <bananareupblic.com> domain name is confusingly similar to Complainant’s BANANA REPUBLIC mark.
2. Respondent does not have any rights or legitimate interests in the <bananareupblic.com> domain name.
3. Respondent registered and uses the <bananareupblic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for its BANANA REPUBLIC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,347,849, registered Apr. 30, 1985), used in connection with its apparel business.
Respondent registered the <bananareupblic.com> domain name on December 29, 2007, and uses it to redirect Internet users to Complainant’s website. Respondent is in violation of Complainant’s affiliate agreement.
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(f), 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 (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 USPTO registration of its BANANA REPUBLIC mark is sufficient to show rights in the mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <bananareupblic.com> is confusingly similar to the BANANA REPUBLIC mark because it incorporates the mark in its entirety, eliminating spaces, transposing the “p” and the “u,” and adding the “.com” gTLD. “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.” Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015). Likewise, “[e]limination 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).” U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007). Hence, the Panel finds that Respondent’s <bananareupblic.com> is confusingly similar to Complainant’s BANANA REPUBLIC 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 (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 (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 asserts that Respondent has no rights or legitimate interests in <bananareupblic.com> and is not commonly known by the disputed domain name. Complainant states that Respondent is not authorized to use the BANANA REPUBLIC mark, and is not affiliated with Complainant. The WHOIS information identifies Respondent as “Jan Cerny” as the registrant of the disputed domain name. Prior panels have concluded that the respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain name. Complainant illustrates that Respondent’s <bananareupblic.com> redirects Internet users to Complainant’s own website. Panels have found that “using [c]omplainant’s mark in a domain name over which [c]omplainant has no control, even if the domain name redirects to [c]omplainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).” Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010).
Complainant indicates that Respondent is in violation of an affiliate program agreement between Complainant and Respondent. Panels have found 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). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006); see also Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, a misspelling of the complainant’s mark, the respondent intended to profit off the domain name at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)). In the absence of any argument to the contrary, the Panel finds that Respondent is not making a bona fide offering of good or services, or a legitimate non-commercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) where the panel found that respondent “has no right or legitimate interest to use an otherwise deceptive trademark . . . even if it is directed to the legitimate owner of the trademark” pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using <bananareupblic.com> in bad faith. Complainant argues that the disputed domain name diverts Internet users to Complainant’s website in violation of Complainant’s affiliate agreement at the expense of Complainant. Panels have held that redirecting Internet users to the complainant’s own website, allowing it to improperly profit from the complainant’s affiliation program, is indicative of the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See, e.g., Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC. v. Dragan Platic / Poste Restante, FA1401001537469 (Forum Feb. 13, 2014). Accordingly, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent has engaged in bad faith typosquatting by deliberately misspelling the BANANA REPUBLIC mark in the <bananareupblic.com> domain. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015). “Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”
Complainant also shows that Respondent attempted to benefit from the registration of the disputed domain name by offering to sell the domain name to the general public. Panels have held that a “[r]espondent’s offering to sell the disputed domain name to a third party (the general public) supports a finding of bad faith registration and use.” See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015). Therefore, the Panel finds that Respondent registered and is using the <bananareupblic.com> domain name in bad faith under the Policy.
Complainant also contends that in light of the fame and notoriety of Complainant's BANANA REPUBLIC mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Based also on Respondent’s use of the disputed domain name, the Panel agrees and finds that Respondent registered <bananareupblic.com> with actual knowledge of Complainant and its rights to the BANANA REPUBLIC mark. This is further evidence of bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under 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 <bananareupblic.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 3, 2017
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