National Arbitration Forum

 

DECISION

 

Gap (Apparel) Inc. v. Republic Jewelry & Collectibles

Claim Number: FA0410000347795

 

PARTIES

Complainant is Gap (Apparel) Inc. (“Complainant”), represented by Steven M. Weinberg, of Greenberg Traurig, LLP, 2375 East Camelback Road, Suite 700, Phoenix, AZ 85016.  Respondent is Republic Jewelry & Collectibles (“Respondent”), 212 Center Street, Auburn, ME 04210.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gapkid.com>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

Houston Putnam Lowry, Chartered Arbitrator as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2004.

 

On October 20, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <gapkid.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 15, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@<gapkid.com> by e-mail.

 

A timely Response was received and determined to be complete on November 15, 2004.

 

Complaint submitted additional material, which was received on November 22, 2004.

 

On December 2, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant Gap (Apparel) Inc. (“Gap”) is the well-known owner of the famous GAP and GAP KIDS service marks and trademarks. The GAP mark has been in continuous use since 1969. The GAP KIDS mark has been in continuous use since 1986. The exclusive rights in the U.S. Registrations for these marks cited above are incontestable. Complainant has over seventy-three (73) U.S. federal registrations and thirty (30) pending applications for marks incorporating its well-known GAP mark in the United States and various countries.

 

Complainant has over twenty five (25) pending applications and registrations of its GAP KIDS mark. Gap was founded in 1969 in San Francisco, California. Gap is one of the world’s largest specialty retailers offering clothing, accessories and personal care products for men, women, children and babies under three. Gap is the owner of the most recognized brands in clothing apparel, GAP, BANANA REPUBLIC, and OLD NAVY with more than 4,200 stores in the United States, United Kingdom, Canada, France, Japan and Germany. Gap has exclusive ownership of the GAP trademark and service mark in the United States and in a number of other countries, which include the brands, GAP KIDS, BABY GAP, GAP BODY, and GAPGIRL, among others.

 

In addition to the trademarks/service marks it owns, Gap owns the following domain names that incorporate the GAP trademark/service mark: <gap.com>, <gapstore.com>, <gapinc.com>, <gapkid.com>, <babygap.com>, <gapbody.com>.

 

Gap has been using the GAP KIDS mark to promote its children’s line of clothing and accessory products since 1986. The GAP KIDS U.S. registrations are incontestable and the marks have become well known through Gap’s extensive use and promotional efforts. In 1997 Gap launched its <GAPKID.COM> on-line services promoting its children’s products.

 

[b] Respondent operates a business in Auburn, Maine. In addition to its jewelry business, Respondent operates the <gapkid.com> website offering a variety of products to adults and children. Respondent registered its <gapkid.com> domain name on December 16, 1999.

 

Respondent registered the domain name, <gapkid.com> without any notice to, or permission or authorization from Complainant. Respondent was a participant, and hence an affiliate in the Complainant’s GAP Affiliate program and prior to and through this affiliation with Complainant was fully aware of Complainant’s exclusive rights in the GAP and GAP KIDS and other marks. Respondent surreptitiously, and without authorization from Complainant, registered and began use of the <gapkid.com> domain name. Complainant advised Respondent through its attorneys in November, 2003 that its use and ownership of the <gapkid.com> domain name was a breach of its GAP Affiliate agreement and was an infringement of Complainant’s trademark rights. Respondent refused to transfer the domain name to Complainant and Complainant subsequently terminated Respondent’s participation in its GAP Affiliate program. Complainant’s attorneys again contacted Respondent in August, 2004 to advise Respondent that its continued use and ownership of the <gapkid.com> domain name was an infringement of Complainant’s trademark rights. Complainant’s counsel sent a letter to Respondent on August 27, 2004 demanding that it immediately cease use of the <gapkid.com> domain name and transfer ownership to Complainant. Respondent has refused to cease use of the <gapkid.com> domain name and mark and transfer ownership of the <gapkid.com> domain name to Complainant.

 

[c.] Respondent does not have any rights or legitimate interest in the <gapkid.com> domain name for the following reason: ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).

 

Respondent is a former terminated affiliate of Complainant who had no rights in the GAP KIDS or other marks owned by Complainant.  Continued use and ownership of the <gapkid.com> domain name and with knowledge that it was not entitled to register or use the <gapkid.com> domain name is a violation of the GAP Affiliate agreement. Respondent owns no trademark or service mark registrations for either the GAP or GAP KID, or any other marks containing the words GAP or GAP KID.

 

Respondent is not making a fair or legitimate use of the domain name. In addition to its continued use and ownership of this domain name in violation of the GAP Affiliate agreement and with knowledge that such use is an infringement of Complainant’s rights, Respondent is using the <gapkid.com> domain name for a website offering products targeted to children. This use is confusing with Complainant’s use of the GAP KIDS mark and <gapkid.com> domain name, both of which are used by Complainant for its children’s products and services, the latter being online. Respondent’s <gapkid.com> website does not link to or contain any particular information concerning Complainant or its products or services, and thus cannot be said to have any “fair use” relationship to Complainant. Respondent is simply trading off of the goodwill of Complainant’s marks by luring unsuspecting viewers looking for information regarding Complainant, its stores and/or products to Respondent’s web site. Complainant has not licensed, consented to or in any way authorized Respondent’s use of the <gapkid.com> domain name. In fact, for the past year, Complainant has unsuccessfully tried to convince Respondent to voluntarily transfer ownership of the domain name. Accordingly, Respondent has no rights or legitimate interest with respect to this domain name. See Guerlain S.A. v. HI Investments, D2000-0494 (WIPO July 25, 2000); see also Anheuser-Busch Incorporated v. Gilinda Rogers A/K/A Giinda Granger, D2001-0134 (WIPO April 4, 2001) (finding that Respondents had “no legitimate interest in the disputed domain names, other than trading off the goodwill of the Complainant).

 

The <gapkid.com> domain name incorporates Complainant’s trademark/service marks, GAP, GAP KIDS and <GAPKID.COM>. Respondent registered the <gapkid.com> domain name after Complainant commenced use of its marks. Respondent upon notification of Gap’s rights to the GAP KID mark has refused to transfer ownership of the domain name.

 

Respondent’s domain name <gapkid.com> is identical and/or confusingly similar to Complainant’s GAP, GAP KIDS, and GAPKID.COM trademarks/service marks. Further, this domain name is virtually identical to Complainant’s marks under Paragraph 4(a)(i) of the ICANN Uniform Domain Name Dispute Policy (“UDRP”). See State Farm Mutual Automobile Insurance Company v. Douglas LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (holdinging the domain name <statefarm-claimshelp.com> to be virtually identical to the registered trademark STATE FARM).

 

Respondent’s use of the domain name <gapkid.com> is also likely to cause initial interest confusion between Complainant’s protected marks and Respondent’s domain name by initially luring a consumer to a site that is not authorized by Complainant. In the State Farm case, the panel found that the use of the domain name <statefarm-claimshelp.com> as a lure to get consumers to its insurance underwriting services caused initial interest confusion.

 

[d.] Respondent registered the domain name in bad faith ICANN Rule 3(b)(ix)(3); ICANN ¶4(a)(iii).

 

Respondent’s domain name links the viewer to a commercial web site. The site consists of a posting of various products targeted to children. The site promotes the sale of these products. There is no question that Respondent, a terminated former affiliate of Complainant, was aware of Complainant’s products and retail services and Complainant’s famous GAP KIDS mark; it is no coincidence that Respondent has registered a domain name comprised of one of Complainant’s primary marks. Respondent’s refusal to transfer ownership of the domain name when contacted by Complainant’s counsel is further evidence of its bad faith ownership of the domain name.

 

That Respondent registered the domain name after Complainant’s marks have become widespread and well known is evident. See Document Technologies v. International Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith) see also, Anheuser-Busch Incorporated v. Gilinda Rogers a/k/a Gilinda Granger D200l-0134 (WIPO April 4, 2001) (the registration and use of domain names with the intent to lead ordinary consumers to illegitimate web site by creating confusion as to ‘source, sponsorship, affiliation, or endorsement’ demonstrates bad faith).

 

Respondent’s domain name was registered in bad faith. Upon information and belief, Respondent registered the domain name for no reason other than to divert traffic to the <gapkid.com> site for the purpose of commercial gain. The continued use of the <gapkid.com> domain name by Respondent is likely to cause confusion among consumers both as to ownership of the trademark and sponsorship and affiliation of the site with Complainant. See Lin Television v. Home in USA, Inc. D2000-0257 (WIPO June 2, 2000) see also State Farm Mutual Automobile insurance Company v. Douglas LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000).

 

B. Respondent

[a.] <gapkid.com> is not confusingly similar to the trademark name of GAPKIDS.COM.  A domain such as <gapkidz.com> or a domain name that sounds similar where people may type something that sounds like <gapkids.com> may be confusing but <gapkid.com> is not confusingly similar.  <gapkid.com> is a totally unrelated non confusing web site utilized for its’ own merits and not designed to confuse consumers.   ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).

 

[b]            For over 20 years Republic Jewelry and Collectibles has been a family owned business selling products such as Coins, Jewelry & Collectibles.  Five years ago, on December 16, 1999, we decided on the <gapkid.com> domain name to sell our products on-line.  Our goal is to bring families together through the products we sell.  Kids spending time with video games and parents working so much make it tough to keep families involved in activities together.   I decided <gapkid.com>would be a useful sales tool in “Filling the Gap between Kids and Adults”.  It is easy to spell and it is easy to remember as it represents what we do. 

 

            Our main products include Ty Beanie Babies, Coins, Trading Cards, and Sports Memorabilia.  These products can bond children with their parents by starting a hobby and collecting the items together.  Metal Detectors are a fun way to bond children and parents as well.  Parents and children can spend the day with one another, hunting for unique treasures, learning about what you find, and at the same time can be great exercise for both.  Yu-Gi-Oh and Pokemon cards are fun games for children and parents to play together.  These games are educational and fun at the same time and teach children math in a fun way. 

 

            I have owned, operated, paid for hosting, and maintenance of <gapkid.com> for the past five years.  I have built a substantial clientele over these years and many people over the years have saved our site as one of their favorites.  I have been known as <gapkid.com> for the last five years as an educational, fun, and hobby web site. 

 

            GAP Inc. wants to take our web site and our customer base to use it for their financial gain, which we have built for families to bond together over the past five years.  A few years back I found out about affiliate programs and signed up with a few programs from different companies.  I signed up with the GAP affiliate program on January 9, 2002 for my website <beaniebestbuy.com> which was receiving thousands of hits daily.  This affiliation was started three years after I had owned and operated <gapkid.com> and the affiliation had nothing to do with the original registration or operation of <gapkid.com>.    I was notified there was a conflict because we owned <gapkid.com> and I was told we could not be an affiliate for the Gap program.  I then told GAP Inc. to cancel my affiliation with the program.  They did not terminate me but I requested to cancel my affiliation as I did not want to forfeit our collectibles site at <gapkid.com> just to be a part of their affiliation program.  I have never sold clothing on my web site to compete with GAP Inc., and I have never tried to deceive people into thinking they were on the GAP Inc. web site.   We are an independent family owned business selling a totally different product line.

 

            I have legitimate rights to this domain I have owned for the past five years.  It would be morally wrong for Gap Inc. to take away a web site which relates to fun and educational ways for children to learn with parents and hobbies which children can bond with parents. <gapkid.com> does not sell clothing, but works on bringing families closer together.  <gapkid.com> - Filling the Gap between Kids and Adults.

            ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).

 

[c.] <gapkid.com> was purchased as a legitimate commercial web site.  <gapkid.com> does not create a likelihood of confusion as the two separate web sites sell different products.  Gap Inc is in the business of selling clothing.  <gapkid.com> does not sell clothing but sells collectibles.  In the unlikely event that someone may come to <gapkid.com> in search of clothing, they would immediately see that we are not selling clothing and would realize it is a totally different non-related web site.  We have never contacted GAP Inc. to sell them <gapkid.com> and have never tried to disrupt their online business. If GAP Inc. is concerned with consumers coming to our web site and somehow not finding their site I would be happy to put a free link on our <gapkid.com> for them.

 ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).

 

C. Additional Submissions

Factual and Background Statement

 

Complainant Gap (Apparel) Inc. (“Gap”) is the owner of various U.S. Federal registrations of its marks GAP (in use since 1969) and GAP KIDS marks(in use since 1986)[1].

 

Respondent registered the URL <gapkid.com> on December 16, 1999.

 

Gap’s statements in the original Complaint as supplemented herein, will establish that it has satisfied its burden under the ICANN Policy as follows:

 

1. Registrant has registered an identical and confusingly similar domain name to Gap’s well-known marks GAP and GAP KIDS. ICANN Policy ¶4(a)(i);

 

2. Registrant has no legitimate interest or rights in the <gapkid.com> domain name. ICANN Policy ¶4(a)(ii); and

 

3. Registrant has acted in bad faith in registering and using the domain name. ICANN Policy ¶4(a)(iii).

 

[a.] Respondent’s <gapkid.com> domain name is virtually identical to the GAP and GAP KIDS marks. ICANN Rule ¶ 3(b)(ix)(1); ICANN Policy ¶4(a)(i).

 

Respondent in its Response filed on November 13, 2004 in connection with this case (the “Response”) claims that its <gapkid.com> domain name is not confusingly similar to Gap’s GAP KIDS mark or its <gapkids.com> domain name because the domain name does not include the letter “s.” See Response at ¶[3.][a]. Respondent’s omission of the letter “s” from its domain name does not change the overall impression of the domain name or similarity with Gap’s marks. See Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15, 2000).

 

Contrary to Respondent’s claim that there is no confusion between its domain name and Gap’s marks, many panels have found that the misspelling of a well known mark does not render it distinct.² In Porto, the Panel determined that the <lovelygirls.com> domain name was virtually identical to the mark LOVELY GIRL. See Minnesota Mining Mfg. v. Taylor, 21 F.Supp.2d 1003, 1005 (D. Minn. 1998); see also Intersteller Starship Sen’s. Ltd. v. Epix, Inc., 983 F.Supp. 1331, 1335 (D. Or. 1997); see alsoPlanned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997), aff’d 152 F.3d 920 (2d Cir. 1998), cert denied, 119 S.Ct. 90 (1998).

 

Respondent’s deletion of the letter “s” in its domain name does not render the marks distinctively sufficient to avoid confusion. The <gapkid.com> domain name is virtually identical to Gap’s mark GAP KIDS and its <gapkids.com> domain name.

 

[b.] Respondent’s <gapkid.com> domain name causes initial interest confusion with Gap’s domain name <gapkids.com>. ICANN Rule ¶ 3(b)(ix)(1); ICANN Policy ¶4(a)(i).

 

Respondent’s use of the <gapkid.com> domain name causes initial interest confusion with Gap’s <gapkids.com> domain name. By virtue of the similarity in the spelling of the two domain names, potential consumers by simply mistyping Gap’s mark or URL address will be directed to Respondent’s web site. Initial interest confusion has long been found to satisfy the ICANN Policy ¶4(a)(i) element of confusion. See The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International, FA 198936 (Nat. Arb. Forum Nov. 20, 2003).

 

Following the Panel’s findings in Falwell, it should be acknowledged that users who type in Respondent’s domain name as a typographical error looking for Gap’s web sites may not continue the search because of frustration resulting in Gap’s loss of revenue and Respondent’s unlawful commercial gain.

 

Prior to Respondent’s registration of its domain name it was not known by, nor had it legitimately used the GAP KID mark. Respondent claims its legitimate right to the domain name based upon the business it has created over the past five (5) years; however, this business has been built upon the goodwill created by Gap. This initial interest confusion has allowed Respondent to ride on the coattails of Gap’s well-known marks through diversion of internet traffic. See The Nasdaq Stock Market, Inc. v. Shawn Cain d/b/a Star Inc., D2002-1 125 (WIPO Jan. 27, 2003) (finding that Complainant’s mark is so well known that Respondent was certainly aware when he registered the Domain Name that he was likely to be misdirecting persons searching for Complainant’s web site).

 

[c.] Respondent does not have any rights or legitimate interest in the <gapkid.com> domain name. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).

 

As discussed in Gap’s Complaint, Respondent has no legitimate interest in the <gapkid.com> domain name and no authorization from Gap to use any of its marks.³

 

Respondent’s use of its <gapkid.com> domain name is simply typo squatting. It is well established that typo squatting does not create a right or legitimate interest in the domain name. In fact it has been held by many panels that typo squatting violates Policy ¶4(c)(ii) and presumes Respondent does not have rights in the domain name. See The Dream Merchant Company Kft. and Creations Meandres Inc. v. Richard Mandanice d/b/a Domain Strategy Inc., FA 137097 (Nat. Arb. Forum Jan. 23, 2003), see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002); see also Pier 1 Imports, Inc. v. Success Work, D2001-04l9 (WIPO May 16, 2001).

 

Contrary to Respondent’s claim that it innocently selected the domain name to sell products to be used by both parents and children to “fill the gap,” the <gapkid.com> domain name in and of itself does not convey this message to the public. Respondent claims to have chosen the domain name because “it is easy to spell and it is easy to remember as it represents what we do.” The words “gap kid” does not communicate to the public a web site devoted to the altruistic desire to bring families closer together. The reason the domain name is easy to spell and easy to remember is because of the good will and association created by Gap from its use of the GAP mark since 1969 and the GAP KIDS mark since 1986. Respondent chose its domain name because it knew of Gap’s mark. The only reason Respondent’s web site has any traffic is from misdirected users who have incorrectly typed Gap’s web site address.  Registering and using a domain name that is a common typographical error of Gap’s mark GAP KIDS and its web site address does not create a legitimate interest in the domain name. See Pig Improvement Co. v. Platinum Net, Inc. D2000-1594 (WIPO Jan.19, 2001).

 

The effect of Respondent’s use of the <gapkid.com> domain name is simply to divert traffic from Gap’s web site <gapkids.com> to its web site <gapkid.com>. This diversionary use of Gap’s mark does not constitute a bona fide or fair use of the domain name. See Bank of America Corporation v. P., FA 131213 (Nat. Arb. Forum Jan. 6, 2003), see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000.  The panel found in both cases that use of the domain name incorporating the misspelling of complainant’s mark to divert traffic was not a legitimate or fair use pursuant to Policy ¶4(c)(iii).

 

[d.] Respondent registered the domain name in bad faith ICANN Rule 3(b)(ix)(3); ICANN ¶4(a)(iii).

 

Respondent’s registration of the domain name after Gap’s marks have become well-known is considered an act of bad faith. See The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International, FA 198936 (Nat. Arb. Forum Nov. 20, 2003); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it).[2]

 

Respondent’s conduct confirms bad faith use of the domain name. Respondent’s registration of the domain name and its refusal to transfer the domain name to Gap as discussed in Gap’s Complaint supports a finding of bad faith. Respondent admits that it cancelled its membership in the Gap affiliate program in an effort to keep the domain name. This effort to avoid Gap’s attempt to stop Respondent’s continued unauthorized use of the domain name also evidences bad faith.

 

Further, in August 2004 when Gap’s counsel contacted Respondent to discuss transfer of the domain name, Respondent offered to sell the domain name to Gap. Respondent offered to transfer the domain name in exchange for a five hundred dollar ($500) Gap gift card. As the Bank of America panel found, offering to sell the domain name in an amount in excess of the out of pocket expenses supports a finding of bad faith. Respondent’s offer to sell the domain name directly counters its claim to a legitimate right in the domain name; another act of bad faith.

 

Gap submits that through its submissions presented in its Complaint and this written statement it has proven that Respondent has registered its <gapkid.com> domain name in violation of the ICANN Policy.

 

 

FINDINGS

While Complainant proved:

 

(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)                the domain name has been registered and is being used in bad faith.

 

Complainant failed to prove Respondent has no rights or legitimate interests in respect of the domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;

(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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in THE GAP, GAP KIDS and <GAPKID.COM> marks through its registration of the marks with the U.S. Patent and Trademark Office. (Reg. No. 944,941, issued October 10, 1972; Reg. No. 1,416,059, issued November 4, 1986; Reg. No. 2,176,659, issued July 28, 1998).  Complainant registered the GAP KIDS and <GAPKID.COM> marks for use in connection with retail store services in the field of clothing.  Complainant has established common law rights in the marks through their use in commerce since 1969.  Additionally, Complainant has over seventy-three U.S. federal registrations and thirty pending applications for various marks incorporating its well known GAP mark in the United States and various countries.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that Complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).

 

The <gapkid.com> domain name is confusingly similar to Complainant’s marks because they fully incorporate the GAP, GAPKIDS and <GAPKID.COM> marks with the mere omission of the letter “s” from the disputed domain name.  The domain name causes Internet user confusion because the domain name fully incorporates Complainant’s marks.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Blue Cross & Blue Shield Ass’n v. InterActive Communications, Inc., D2000-0788 (WIPO Aug. 28, 2000) (finding that a domain name which merely adds the letter ‘s’ to Complainant’s mark is sufficiently similar to the mark to cause a likelihood of confusion among the users of Complainant’s services and those who were to view a web site provided by Respondent accessed through the contested domain name).

 

Rights or Legitimate Interests

 

Respondent has owned and operated the <gapkid.com> domain name for the past five years for a business engaged in “bridging the gap between kids and parents” through the sale of products such as Ty Beanie Babies, coins, trading cards, and sports memorabilia.  Respondent has used the domain name in connection with a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i).  See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that Respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondents operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name). 

 

It should be noted Complainant and Respondent are NOT  in identical areas of commerce.  Respondent is not “typo squatting.”

 

A passage from one of this Panel’s prior cases seems particularly appropriate to quote at this point:

 

The Panel feels compelled to comment on Complainant’s delay in bringing this action.  The <targetshopping.com> domain name was registered in 1999.  Complainant waited roughly four years to bring this proceeding.  This is troubling.  A party does not normally slumber on its rights and the Panel does not know why Complainant waited so long to protect its rights.  In the meantime, Respondent established its business (see Policy ¶ 4(c)(i)).  There was no showing Complainant contacted Respondent before Respondent spent substantial effort in designing and implementing an e-commerce portal.  While the <targetshopping.com> domain name public website was merely serving as a splash page to redirect traffic to five other websites, there was a significant private e-commerce website located at this domain name. Target Brands, Inc. v. 4160894 Canada Inc., FA0401000227648.

 

That passage and the rationale behind it are equally applicable to this case.  While there was almost certainly a case of trademark infringement (especially since Respondent was once affiliated with Complainant and dropped the affiliation so it could keep the <gapkid.com> domain name), that is essentially immaterial in a UDRP proceeding. 

 

Respondent registered the domain name on December 16, 1999 and put up a web site.  Complainant did nothing.

 

Respondent signed up for Complainant’s affiliate program (using a different domain name) on January 9, 2002 (slightly more than two years after registering the domain name).  Complainant did not take any action regarding <gapkid.com>. 

 

Respondent resigned from Complainant’s affiliate program.  Still Complainant did nothing.

 

Complainant had its first conversation with Respondent regarding <gapkid.com> on August 16, 2004, 4 years, 8 months after the domain name was first registered and used by Respondent.  The first cease and desist letter was written on August 27, 2004.  This delay was never explained to the Panel, other than to suggest “typo squatters” never can acquire any rights to a domain name.

 

Reviewing cases this Panel has decided in the past, Respondents can acquire rights to domain names in less time than presently at issue:

 

 

Under the facts of this case and solely for the purposes of the UDRP, this Panel finds Respondent has acquired rights to the <gapkid.com> domain name

 

Registration and Use in Bad Faith

 

Respondent registered the <gapkid.com> domain name without any notice to, or permission or authorization from Complainant.  Respondent was an affiliate of Complainant’s affiliate program and Respondent was fully aware of Complainant’s exclusive rights in the GAP, GAPKIDS and <GAPKID.COM> marks.  Respondent surreptitiously registered the disputed domain name without Complainant’s authorization.  The relationship between Respondent and Complainant implies a predatory intent and bad faith registration and use, pursuant to Policy ¶ 4(a)(iii).   See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

 

Respondent’s commercial use of the misleading domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Saturday, December 11, 2004

 

 

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