WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION The Gap Inc. v. Deng Youqian Case No. D2008-1187
1. The Parties
The Complainant is The Gap Inc., San Francisco, California, United States of America, represented internally.
The Respondent is Deng Youqian, Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2008. On August 5, 2008, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the Domain Name. On August 11, 2008, R Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 3, 2008.
The Center appointed David Taylor as the sole panelist in this matter on September 15, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a well-known company created in 1969 in San Francisco, USA. Its activity is mainly focused on the sale of clothing but also includes the sale of leather goods (handbags and backpacks), fragrances, cosmetic and bath and home products.
The Complainant owns many trade marks in the terms GAP and a number of variations thereof in countries around the world. The Complainant owns amongst others the following United States service mark and trade mark registrations:
– THE GAP (Registration number 944,941), registered on October 10, 1972;
– GAP OUTLET (Registration number 2,020,323), registered on December 3, 1996;
– GAP (Registration number 1,406,870), registered on August 26, 1986;
– BABY GAP (Registration number 1,675,154), registered on February 11, 1992;
– GAP ATHLETIC (Registration number 1,950,476), registered on January 23, 1996;
– GAP BODY (Registration number 2,498,434), registered on October 16, 2001;
– GAP KIDS (Registration number 2,667,661), registered on December 31, 2002.
The Complainant owns many stores worldwide, a number of which have been run under its GAP OUTLET brand since 1993.
The Domain Name was first registered on June 11, 2001 and is currently registered to the Respondent.
The Domain Name is pointed to a website containing sponsored links to competitors of the Complainant.
5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its trade mark in the term GAP OUTLET and confusingly similar to its trade mark in the term GAP. The Complainant states that it is well-known in many countries around the world.
The Complainant also contends that the Respondent has no rights or legitimate interests with respect to the Domain Name. In that respect the Complainant states that the Respondent does not own any trade marks in the term GAP. The Respondent has not been licensed by the Complainant to use any of its trade marks and the Respondent is not commonly known by the Domain Name.
The Complainant asserts that the Domain Name has been registered and is being used in bad faith under the criteria set forth in paragraph 4(b) of the Policy. The Complainant contends that the Respondent had the Complainant's GAP and GAP OUTLET trade marks in mind when he registered the Domain Name. In the opinion of the Complainant, the Respondent intended to tarnish its well-known GAP and GAP OUTLET trade marks. According to the Complainant, the Respondent's choice of the Domain Name, which comprises a well-known trade mark, evidences his intention to confuse Internet users and to attract them to his website for commercial gain resulting from the referral fees of the sponsored links to competitors of the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules states that a Panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In the case of default by a party, paragraph 14 of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it deems appropriate. In this case, the Respondent has not submitted any Response and consequently, despite the opportunity given, has not contested any of the contentions made by the Complainant. The Panel will therefore proceed on the basis of the factual statements contained in the Complaint and the documents available to support the Complainant's contentions.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) the Domain Name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(ii) the Domain Name has been registered and is being used in bad faith.
Taking each of these issues in turn, the Panel decides as follows: A. Identical or Confusingly Similar
The Complainant must first prove that it has rights in a trade mark which is identical or confusingly similar to the Domain Name.
The Complainant has submitted evidence that it has rights in the terms GAP and GAP OUTLET in the United States of America. The Complainant states that it owns many registered trade marks in the term GAP worldwide, including in China, where the Respondent resides. Although the Complainant only provides a list of countries where the GAP brands are supposedly registered without submitting any further details of those registrations, the Panel is satisfied that the Complainant has provided sufficient evidence of its trade marks in the United States of America and that its brand is well-known. The Panel is therefore satisfied that the Complainant has rights in the terms GAP and GAP OUTLET.
The Domain Name is identical to the trade mark GAP OUTLET and confusingly similar to the trade mark GAP. The addition of an extension such as “.com” does not diminish either the identicality or the confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is identical and confusingly similar to trade marks in which the Complainant has rights within the meaning of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
The Policy (paragraph 4(c)) sets out various ways in which a respondent may demonstrate rights or legitimate interests in the Domain Name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has presented a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut that showing.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The third element that the Complainant must prove is that the Domain Name has been registered and is being used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith, as follows:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website linked to the Domain Name, by creating a likelihood of confusion with the Complainant's mark. The use of the Domain Name for a website featuring sponsored links to competitors of the Complainant is a classic example of bad faith.
The Panel therefore finds that the Complainant has succeeded in proving that the Domain Name has been registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
David Taylor
Sole Panelist
Dated: September 29, 2008
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