WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Gap, Inc. v. Deng Youqian Case No. D2009-0113 1. The Parties
Complainant is The Gap, Inc., San Francisco, California, United States of America, represented by Cooley Godward Kronish LLP, United States.
Respondent is Deng Youqian, Shanghai, People Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2009. On January 29, 2009, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain names. On February 2, 2009, R Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient concerning the word limit, Complainant filed an amended Complaint on February 6, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2009. Respondent did not submit a Response. Accordingly, the Center notified Respondent's default on March 4, 2009.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on March 9, 2009. 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 trademarks upon which the Complaint is based are GAP, BANANA REPUBLIC, and OLD NAVY.
According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the GAP and GAP-formative marks around the world, and particularly in the United States and China. The GAP trademark was registered in the United States, inter alia, under Nos. 1,129,295 on January 15, 1980 (GAP), 1,675,154 on February 11, 1992 (BABY GAP), 1,808,207 on November 30, 1993 (GAP as service mark), 2,176,659 on July 28, 1998 (GAPKIDS.COM), 2,540,610 on February 19, 2002 (GAP.COM), and 2,675,048 on January 14, 2003 (BABYGAP.COM). Similar trademarks were registered in China since 1992.
According to the documentary evidence and contentions submitted, the GAP brand was first divulged in 1969 when the first GAP store was created in San Francisco, California, to sell jeans and records. Complainant also operates websites under the domains , and , which were registered in the period of 1993 to 1997.
According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the BANANA REPUBLIC and BANANA REPUBLIC-formative marks around the world, and particularly in the United States and China. The BANANA REPUBLIC trademark was registered in the United States, inter alia, under Nos. 1,347,849 on July 9, 1985 (BANANA REPUBLIC), 2,079,325 on July 15, 1997 (BANANA REPUBLIC as service mark), and 2,534,585 on January 29, 2002 (BANANAREPUBLIC.COM). Similar trademarks were registered in China since 1992.
According to the documentary evidence and contentions submitted, the BANANA REPUBLIC brand was first divulged in 1978 when the first BANANA REPUBLIC store was created in Mill Valley, California, to sell military surplus clothing. Complainant acquired Banana Republic in 1983, and also operates a website under the domain , which was registered in 1995.
According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the OLD NAVY and OLD NAVY-formative marks around the world, and particularly in the United States and China. The OLD NAVY trademark was registered in the United States, inter alia, under Nos. 1,928,001 on October 17, 1995 (OLD NAVY), and 2,418,340 on January 2, 2001 (OLDNAVY.COM). Similar trademarks were registered in China since 1998.
According to the documentary evidence and contentions submitted, the OLD NAVY brand was first divulged in 1994 when the first OLD NAVY store was created in California, to sell casual apparel and related products. Complainant operates a website under the domain , which was registered in 1995.
According to the documentary evidence and contentions submitted, Respondent registered the domain names , , , and on October 4, 2005, October 6, 2006, March 29, 2004, and October 10, 2005, respectively; the domain name on November 27, 2005, and the domain name on October 2, 2005. On December 23, 2008, Complainant sent a cease and desist letter to Respondent. Complainant states that Respondent never replied. 5. Parties' Contentions A. Complainant
Complainant contends that (i) the disputed domain names , , , and are identical or confusingly similar to Complainant's trademarks because they incorporate the GAP and BABY GAP trademarks with the addition of generic words such as “clothing”, “fashion”, “coupon” and “big”, thus suggesting an association with Complainant, (ii) the domain name is confusingly similar to Complainant's registered trademark because it only differs from BANANA REPUBLIC trademark by a minor typographical error, and (iii) the domain name is confusingly similar to Complainant's registered trademarks because it combines Complainant's OLD NAVY trademark with the REID SYSTEMS trademark.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain names because (i) Respondent does not hold any trademark registrations which are identical, similar, or related to Complainant's marks; (ii) Respondent is not an authorized dealer, distributor, or licensee of Complainant; (iii) the disputed domain names are not the ones that Respondent would choose in the context of providing goods or services other than to create an association with Complainant's marks, and (ii) Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services, since they are used in connection with click-through advertisements.
Finally, Complainant contends that Respondent registered and is using the disputed domain names in bad faith because (i) Respondent was certainly aware the GAP, BANANA REPUBLIC and OLD NAVY trademarks since they are well known, and registration of domain names containing well-known trademarks constitute bad faith per se; (ii) Respondent aims to capitalize and free-ride on the fame and reputation of Complainant's marks, and (iii) Respondent has shown a pattern of bad faith conduct because of Respondent's registration of over 1,000 domains that are substantially identical to third party trademarks. B. Respondent
Upon receipt of the Center's Notification of Complaint and Commencement of Administrative Proceeding, Respondent sent an email to the Center stating that “Respondent never heard of complainant therefore those domains could not have been registered in bad faith”. The Center advised Respondent that the Response due date was March 3, 2009. However, Respondent did not file a Response to Complainant's contentions. It is clear, therefore, that Respondent chose not to file a Response. 6. Discussion and Findings A. Laches
The Panel notes that the disputed domain names were registered in the period of October 2004 to November 2005, and that the Complaint was filed on January 29, 2009. The question which arises is whether the elapse of around 4 years from the domain name registration date prevents Complainant from commencing an administrative proceeding against Respondent under the Policy.
The Panel recognizes that the issue has been addressed in previous WIPO decisions and that the doctrine of laches or estoppel has not been applied to the Policy proceedings. “Estoppel has rarely been raised as a defense in a proceeding under the Policy, and to this panel's knowledge has never been the basis for denying a complaint when all elements of the Policy were established”, Justice for Children v. Rneetso / Robert W. O'Steen,WIPO Case No. D2004-0175. See also Tax Analysts v. eCorp,WIPO Case No. D2007-0040.
As decided in Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560, “[w]ithout some substantial evidence to indicate that Complainant approved of or condoned Respondent's use of his mark in the disputed domain name, the Panel is not prepared to import a bar against his cause of action.” B. Effect of the Default
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to reply to all of Complainant's contentions by submitting a complete Response. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. C. Identical or Confusingly Similar
The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888; adidas-Salomon AG v. Mti Networks Ltd,WIPO Case No. D2005-0258; AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758.
That is particularly true where the trademark is highly recognizable and famous, as in the instant case. In fact, Complainant has provided sufficient evidence that the trademarks GAP and OLD NAVY are famous. Each of the domain names , , , , and incorporates the whole of the famous GAP or OLD NAVY trademarks, as the case may be, and therefore may lead the public to think that the disputed domain names are somehow connected to the owner of the registered trademarks. Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159.
In addition, it has been decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name does not elimminate confusing similarity to the registered trademark. V&S Vin&Sprit AhB v. Giovanni Pastore,WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo,WIPO Case No. D2004-0746; Sanofi-Aventis v. US-M, WIPO Case No. D2004-0809; F. Hoffman-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.
The words “clothing”, “fashion”, “coupon” and “big” are in the context of Complainant's goods generic, and do not generally affect a finding of similarity where a registered trademark is incorporated into a domain name. As a matter of fact, the combination of “gap” or “baby gap” with “clothing”, “fashion”, “coupon” or “big” creates an immediate potential for false association with the GAP trademark and brand name, and a high degree of initial confusion. See adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson,WIPO Case No. D2006-0748.
As decided in Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896, “the addition of other marks does not create a distinct mark/domain name, capable of overcoming a claim of confusingly similarity, it merely adds to the potential confusion of Internet users as to the source, sponsorship and affiliation of the domain name”. See also Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793. Therefore, is confusingly similar to Complainant's OLD NAVY trademark even with the addition of “reid systems”.
The domain name is confusingly similar to the BANANA REPUBLIC trademark because only some letters have been interchanged. The practice of misspelling an element of the mark, generally called “typosquatting”, has consistently been regarded as creating domain names confusingly similar to the relevant mark. See, e.g., Reuters Limited v. Global Net 2000 Inc.,WIPO Case No. D2000-0441; Playboy Enterprises v. Movie Name Company,WIPO Case No. D2001-1201; Deutsche Bank Aktiengesells v. New York TV Tickets Inc.,WIPO Case No. D2001-1314; Hobsons, Inc. v. Peter Carrington a/k/a Party Night Inc.,WIPO Case No. D2003-0317; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
Respondent is using the disputed domain names to resolve to websites with click-through advertisements pointing to Complainant as well as to other websites, including those competing with Complainant and those offering services unrelated to Complainant's products. The websites to which the disputed domain names resolve are entirely in English.
The issue as to whether use of a domain name for purposes of offering “sponsored links” creates a legitimate right to a domain name has been addressed in previous WIPO UDRP decisions. There is a consensus view that except in certain limited circumstances such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use. See Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wong,WIPO Case No. D2005-0819; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162.
In fact, the Panel sees no plausible explanation for Respondent's adoption and use of the terms “gap”, “old navy” and “bananarebulic” in the disputed domain names and, accordingly, concludes that the disputed domain names were selected and used by Respondent to take advantage of the notoriety associated with the GAP, BANANA REPUBLIC, and OLD NAVY names, with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain names, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. E. Registered and Used in Bad Faith (i) Bad faith because of the fame of the GAP, BANANA REPUBLIC and OLD NAVY trademarks
Complainant's first contention of bad faith is based on the argument that at the time of registration of the disputed domain names Respondent knew, or at least should have known, the existence of Complainant's trademarks, and that registration of a domain name containing well-known trademarks constitutes bad faith per se.
The Panel finds that, in addition to GAP and OLD NAVY, the BANANA REPUBLIC trademark has also acquired extensive and worldwide reputation and is to be regarded as a well-known trademark.
As one panel held before, “the Complainant's worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”. Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517. In light of the reputation of the GAP, BANANA REPUBLIC and OLD NAVY trademarks, it is clear that Respondent in all likelihood knew of the existence of Complainant's trademarks.
In addition, the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Veuve Clicquot Ponsardin, Maison Fond ée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. (ii) Attempt to capitalize and free-ride on the reputation of Complainant's marks
Complainant's second contention of bad faith is based on the argument that Respondent is using the disputed domain names to benefit from the reputation of Complainant's marks by redirecting Internet users to sponsored listings of commercial websites of third parties, some of which compete directly with Complainant.
The Panel has already found that that the disputed domain names were selected and used by Respondents with the intent to attract for commercial gain Internet users. The Panel concurs with the understanding of several other WIPO UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites is evidence of bad faith, particularly if, as in the instant case, complainant had registered and used before famous trademarks. Mudd(USA), LLC v. Unasi, Inc.(MUDDPRODUCTS-COM-DOM),WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc.,WIPO Case No. D2005-0556. (iii) Pattern of bad faith conduct
Complainant's last contention of bad faith is based on the argument that Respondent has shown a pattern of bad faith conduct by having registered over 1,000 domain names that are substantially identical to third party trademarks.
Respondent has lost at least two UDRP disputes before WIPO, in which bad faith has been found in each instance, one of which involves the same parties to this case. The Gap Inc. v. Denq Youqian,WIPO Case No. D2008-1187; Earth Products Inc. v. Deng Youqian,WIPO Case No. D2008-0256. Complainant also ordered a “Reverse WHOIS” search through MarkMonitor on December 22, 2008 containing the term “Deng Youqian”. The search revealed that Respondent has registered over 1,000 domain names, many of which infringe third party trademark rights.
Therefore, the Panel finds that Respondent has shown a pattern of bad faith conduct, and notes that Respondent has done nothing to supplant that indication.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 names , , , , , and be transferred to Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: March 23, 2009
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