Complainant is Banana Republic (Apparel) LLC of San Francisco, California, United States of America (“US”), represented by Fross Zelnick Lehrman & Zissu, PC, US.
Respondent is Ronda Rollins of South Carolina, Florida, US. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2013. On February 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 5, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 7, 2013 inviting Complainant to cure the deficiencies in the Complaint. Complainant filed an amended Complaint on February 7, 2013.
The Center verified that the Complaint together with 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 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 1, 2013.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on March 7, 2013. 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
Complainant is a well-known fashion and accessories company, in operation since 1978. Complainant holds 1800 trademark registrations for its BANANA REPUBLIC family of marks in 160 countries. Complainant also conducts business at and many other domain names incorporating its BANANA REPUBLIC mark.
Respondent registered the and domain names on January 2, 2013. Complainant submits that the domain name does not resolve to an active website. The resolves to a website which copies Complainant’s website images and text, as well as Complainant’s advertisements, and sells goods that directly compete with Complainant’s goods. 5. Parties’ Contentions A. Complainant
1. Respondent’s and domain names are confusingly similar to Complainant’s BANANA REPUBLIC mark.
2. Respondent does not have any rights or legitimate interests in the and domain names.
3. Respondent registered and used the and domain names in bad faith. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
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(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 Management., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (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. Michael Robertson,WIPO Case No. D2000-0009 (finding that in the absence of a response, it is appropriate to accept as true all allegations of the Complaint.). A. Identical or Confusingly Similar
The Panel finds that Complainant’s rights in its BANANA REPUBLIC mark are well established through long and widespread use, and through its many trademark registrations throughout the world. Previous panels have routinely determined that trademark registrations establish complainants’ rights for purposes of Policy 4(a)(1). See Expedia, Inc. v. Elia Tan, NAF Claim No. 991075 (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s and domain names are confusingly similar to Complainant’s BANANA REPUBLIC mark, as each incorporates the entire mark, simply adding the generic top-level domain (“gTLD”) “.com” and “sale” or “shop,” generic terms that relate to Complainant’s business. These changes do not distinguish the disputed domain names from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also The Gillette Company v. RFK Associates, NAF Claim No. 492867 (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s from the complainant’s DURACELL mark); see also Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). B. Rights or Legitimate Interests
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 Productions., Inc. v. Entertainment Commentaries, NAF Claim No. 741828 (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. Jordan Gerberg, NAF Claim No. 780200 (“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 alleges that Respondent is not commonly known by the and domain names. The WhoIs information indicates that Respondent is identified as “Ronda Rollins,” which is evidence that Respondent is not commonly known by the and domain names under Policy ¶ 4(c)(ii). Complainant states that it has not given Respondent license, permission or other authorization to use its BANANA REPUBLIC mark for any purpose, further evidence that Respondent is not commonly known by the disputed domain names and has no rights or legitimate interests in the disputed domain names. See Guerlain S.A. v. HI Investments, WIPO Case No.WIPO Case No. D2000-0494 (no rights or legitimate interests where Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for a domain name incorporating its trademark); see also IndyMac Bank F.S.B. v. Grant Eshback d/b/a eMit Mortgage, Inc, NAF Claim No. 830934 (finding that the respondent failed to establish rights and legitimate interests in the domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant asserts that Respondent is using the to capitalize on the fame of Complainant’s BANANA REPUBLIC mark in order to sell goods that directly compete with Complainant’s goods. The Panel finds that this is not 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 Alcon, Inc., and Alcon Laboratories, Inc. v. ARanked c/o Duck Dawson, NAF Claim No. 1306493 (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting Internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent has not made an active use of the domain name, indicating that Respondent also lacks rights or legitimate interests in that domain name. See American Broadcasting Companies, Inc. v. Merrill Sech, NAF Claim No. 893427 (finding that the respondent’s non-use of the domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). C. Registered and Used in Bad Faith
Respondent copies images and text from Complainant’s website and advertising, and sells goods that directly compete with Complainant’s goods. Complainant argues that this shows that Respondent was aware of Complainant’s rights in the BANANA REPUBLIC mark at the time Respondent registered the and domain names. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark when it registered the and domain names, evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios c/o Tamer Malekames, NAF Claim No. 1031703 (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent is using Complainant’s famous mark to attract Internet users to the website at by falsely suggesting an association with Complainant. Respondent no doubt profits from the sale of competing goods at the website resolving from the disputed domain name. This demonstrates that Respondent is attempting to attract Internet users by creating a likelihood of confusion, for its own commercial gain, which constitutes bad faith under Paragraph 4(b)(iv) of the Policy.
Respondent is not making an active use of the domain name, also evidence of Respondent’s bad faith. Passive holding has been deemed bad faith by previous panels. See American Broadcasting Companies, Inc. v. Merrill Sech, NAF Claim No. 0893427 (concluding that the respondent’s failure to make active use of its domain name in three months after its registration indicated that the respondent registered the domain name in bad faith).
Complainant argues that Respondent is a serial cybersquatter, based on its registrations of other domain names incorporating well-known clothing brands, which could demonstrate bad faith registration and use under Policy ¶ 4(b)(ii). However, since these domain names have not been reviewed by a UDRP Panel, the Panel declines to find a pattern of bad faith pursuant to Policy ¶ 4(b)(ii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to Complainant.
Sandra J. Franklin
Sole Panelist
Date: March 17, 2013
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