The Gap, Inc. v. NA Seocho c/o NA a/k/a Free Domains Parking and Andrey Vasilie c/o Cosmos1 c/o NA NA
Claim Number: FA1006001330880
Complainant is The Gap, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com>, registered with ENOM, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2010.
On June 21, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 June 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2010 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@<wwwoldnavy.com, postmaster@bannanarepublic.com and postmaster@bananarepubic.com by e-mail. Also on June 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 July 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwoldnavy.com> domain name is confusingly similar to Complainant’s OLD NAVY mark.
Respondent’s <bannanarepublic.com> and <bananarepubic.com> domain names are confusingly similar to Complainant’s BANANA REPUBLIC mark.
2. Respondent does not have any rights or legitimate interests in the <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com> domain names.
3. Respondent registered and used the <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Gap, Inc., owns and uses the OLD NAVY and BANANA REPUBLIC marks in connection with the sale of clothing and related accessories through its online and retail stores. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its OLD NAVY (e.g., Reg. No. 1,931,339 issued Oct. 31, 1995) and BANANA REPUBLIC marks (e.g., Reg. No. 1,347,849 issued July 9, 1985).
Respondent registered the <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com> domain names not earlier then March 10, 2000. Respondent’s disputed domain names resolve to the third-party website located at <usseek.com> that displays a link to Complainant’s official websites and third-party links to competing websites and businesses.
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."
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.”).
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.
Preliminary Issue: Multiple
Respondents
In the instant proceedings, Complainant has alleged that the
entities which control the domain names at issue are effectively controlled by
the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides
that a “complaint may relate to more than one domain name, provided that the
domain names are registered by the same domain name holder.” The Panel finds that Complainant has provided
sufficient evidence to indicate that the disputed domain names are controlled
by the same entity. Therefore, the Panel
will proceed with the instant proceedings.
The Panel finds that Complainant has presented sufficient
evidence to establish rights in its OLD NAVY (e.g., Reg. No. 1,931,339 issued Oct. 31, 1995) and BANANA REPUBLIC
marks (e.g., Reg. No. 1,347,849
issued July 9, 1985) under Policy ¶ 4(a)(i) through
its trademark registrations with the USPTO.
See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum
Nov. 29, 2005) (finding from a preponderance of the evidence that the
complainant had registered its mark with national trademark authorities, the
Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes
of Policy ¶ 4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant contends that the
<wwwoldnavy.com> domain
name is confusingly similar to Complainant’s OLD NAVY mark. Complainant contends that the disputed domain
contains its mark entirely, without the space between the terms of its mark,
and omits the period between the “www” and Complainant’s OLD NAVY mark. Complainant further argues that the addition
of the generic top-level domain (“gTLD”) is irrelevant to Policy ¶ 4(a)(i)
analysis. Therefore, the Panel finds
that the <wwwoldnavy.com> domain name is confusingly similar to
Complainant’s OLD NAVY mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb.
Forum Aug. 1, 2000) (finding that the respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF
Complainant also argues that the <bannanarepublic.com> and <bananarepubic.com> domain names are confusingly similar to Complainant’s BANANA REPUBLIC mark. Complainant notes that the disputed domain names contain misspelled versions of its mark by either adding the letter “n” or removing the letter “l” from its mark. Further, Complainant argues that the addition of the gTLD “.com” is not relevant in determining confusingly similarity under Policy ¶ 4(a)(i). The Panel agrees with Complainant and finds that the <bannanarepublic.com> and <bananarepubic.com> domain names are confusingly similar to Complainant’s BANANA REPUBLIC mark pursuant to 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).); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also supra Rollerblade, Inc. v. McCrady.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com> domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com> domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not sponsored by or
affiliated with Complainant, and that Respondent has not been given permission
to use Complainant’s marks in any way.
Complainant further contends that Respondent is not commonly known by
the <wwwoldnavy.com>, <bannanarepublic.com>
and <bananarepubic.com> domain names. The WHOIS information identifies “NA NA
Seocho,” “NA,” and “Andrey Vishnevskii” as the registrants of the <wwwoldnavy.com>, <bannanarepublic.com>
and <bananarepubic.com> domain names, respectively. Respondent has not come forward with any
evidence indicating that it is commonly known by the disputed domain
names. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain names 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the 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 the respondent was commonly known by the disputed
domain name).
Complainant
contends that the <wwwoldnavy.com>, <bannanarepublic.com>
and <bananarepubic.com> domain names resolve to the
third-party <usseek.com> website.
Complainant argues that Respondent’s website contains third-party links
to Complainant’s official websites as well as to competing websites and
businesses in the clothing and accessories industry. Complainant contends that Respondent receives
click-through fees from the third-party links displayed on its website and as
such is not making a bona fide
offering of goods or services or a legitimate noncommercial or fair use of the
domain names. The Panel agrees and finds
that Respondent’s use of the <wwwoldnavy.com>, <bannanarepublic.com>
and <bananarepubic.com> domain names to display third-party links to Complainant’s official website and to
competing businesses is not a use in connection with 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). 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).”); see also
ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007)
(finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites
from which Respondent presumably receives referral fees….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).”).
Complainant further asserts that Respondent is taking
advantage of Internet users that are attempting to reach Complainant’s website
by capitalizing on the misspelling of the Complainant’s OLD NAVY AND BANANA
REPUBLIC marks. The Panel finds that the
Respondent’s use of typosquatting is evidence that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent is using the disputed
domain names to resolve to the third-party website located at
<usseek.com> that displays various third-party links to websites in
competition with Complainant in the clothing and accessories market. Complainant submits evidence to show that
Respondent receives approximately 1,000 to 10,000 visitors per month to its
disputed domain names, and that as such many Internet users are diverted from
Complainant’s business. The Panel finds
that Respondent’s use of the disputed domain names to redirect Internet users
seeking Complainant’s official <oldnavy.com> and
<bananarepublic.com> websites to the websites of Complainant’s
competitors, such as Ann Taylor, creates a disruption in Complainant’s business
and is evidence of registration and use in bad faith under Policy ¶
4(b)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the
use of a confusingly similar domain name to attract Internet users to a
directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under
Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further contends that Respondent receives referral or click-through fees for the third-party links displayed on the website resolving from the disputed domain names. Complainant argues that Respondent’s intentional attraction of Internet users to its websites for commercial gain is further evidence of Respondent’s bad faith registration and use. The Panel agrees and finds that Respondent’s use of the disputed domain names to divert Internet users to a directory website containing links to Complainant’s official websites as well as to the websites of Complainant’s competitors, presumably for financial gain, is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel has already determined that Respondent has engaged
in typosquatting through its registration and use of the <wwwoldnavy.com>, <bannanarepublic.com>
and <bananarepubic.com> domain names. This practice has been found to constitute
evidence of bad faith registration and use under Policy ¶ 4(a)(iii),
and so this Panel finds. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the
respondent’s registration and use of the <nextell.com> domain name was in
bad faith because the domain name epitomized typosquatting in its purest form);
see also Internet Movie
Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's
registration of the domain names in dispute constitutes bad faith because the
domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Therefore, the Panel finds that Respondent
registered and is using the disputed domain names in bad faith under Policy ¶
4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwoldnavy.com>, <bannanarepublic.com> and <bananarepubic.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 27, 2010
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