The Complainants are Gap (Apparel) LLC and Gap (ITM) Inc. of San, Francisco, California, United States of America ("US"), represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is Chunyuan Jiang of Nanchang, Jiangxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2014. On October 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 13, 2014, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On October 14, the Complainants submitted its request that English be the language of the proceeding. The Respondent did not submit its comment within the specified due date.
The Center verified that the 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 the Respondent of the Complaint in Chinese and English, and the proceedings commenced on October 23, 2014. On October 23, 2014, the Center received an email from the Respondent in Chinese, indicating that it is not familiar with English and requested that Chinese be the language of the proceeding. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of the proceeding to the Panel appointment on November 13, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 21, 2014. 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 Complainants in this administrative proceeding are Gap (Apparel) LLC and Gap (ITM) Inc. ("the Complainant") based in the US. The Complainant and its related companies own the GAP family of trademarks in the US and around the world.
The Complainant is in the business of retailing clothing, accessories, personal care products and other merchandise since 1969.
The Complainant also operates a series of factory outlet stores that operate under the trade names "Gap Outlet" and "Gap Factory Store". The Complainant operates a total of 367 GAP factory outlet stores globally, 238 of which are located in the US. The first GAP factory outlet store opened in August 17, 1994 in Oxnard, California. The Complainant opened the first GAP factory outlet store in China in September 2012 and currently operates 12 GAP factory outlet stores in China.
Besides common law rights in the GAP and GAP FACTORY STORE trademarks ("GAP Trademarks"), the Complainant owns numerous trademark registrations for the GAP Trademarks for clothing-related goods and services in the US and in Canada. The Complainant also owns a number of trademark registrations in jurisdictions around the world, including China, for its GAP Trademarks.
The Complainant also has a substantial presence in the Internet via websites and social media. The Complainant operates the main Gap website, "", which was visited by over 103 million US visitors in 2012 as well as several country-specific websites, such as "", "" and "". It also ships merchandise to over 80-countries via "", including to China. The Complainant advertises and promotes its GAP brand and goods and services on social media and networking websites, and operates social media pages for its GAP FACTORY STORE brand at social media and networking websites.
The disputed domain name was created on February 19, 2014, long after the Complainant had begun using and had registered its GAP Trademarks in the US and around the world.
The website currently appearing at the Internet address associated with the disputed domain name is merely a parked website containing links to third-party websites that compete directly with the Complainant. When a user inputs the disputed domain name, a web page of "Related Links" appears. These links include a listing for "Gap Outlet." When a user clicks on any one of the foregoing links, the user is taken to a second page of links to websites of third-parties that provide apparel and clothing related services, the one for "Gap Outlet" includes links to "Gap Factory Store" and other websites, many of whom are competitors of the Complainant.
Consumers that type in the disputed domain name when looking for information concerning the Complainant's services or products are misdirected by the parked website at the disputed domain name and led to the websites of the Complainant's competitors. Furthermore, the Respondent apparently benefits financially from this misdirection by virtue of its receipt of the "click-through" revenues generated by such link-laden domain name parking sites. 5. Parties' Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks.
The reasons are summarized as follows:
1. The Complainant has strong rights in the GAP Trademarks based on its use of GAP in and as part of a trademark since 1969, its use of the GAP Trademarks on clothing products sold throughout the world, its registration of the GAP Trademarks in jurisdictions around the world, extensive marketing and promotional activities for its products, and its web presence at "" since 1997.
2. The GAP Trademarks have been held famous by both US federal courts and the Trademark Trial & Appeal Board of the US Patent & Trademark Office. Prior UDRP panels have also found the GAP Trademark to be famous.
3. The disputed domain name incorporates, in its entirety, the Complainant's registered GAP Trademark. This is sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy.
4. The Respondent's decision to add the term "factory" to the GAP trademark does not distinguish the disputed domain name from the Complainant's GAP FACTORY STORE trademarks, as the disputed domain name consists of nothing more than the Complainant's GAP FACTORY STORE trademark, minus the "store" portion of the mark.
5. The generic Top-Level Domain ("gTLD") indicator ".com" cannot be taken into consideration when judging confusing similarity.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:
1. The Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Complainant and Respondent have no apparent relationship that would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating or confusingly similar to the GAP Trademarks.
2. The disputed domain name is not, nor could it be contended to be, a nickname of the listed Respondent or in any other way identified with or related to a legitimate interest of the listed Respondent. There is no indication that the Respondent ever has been known by the disputed domain name, which is further evidence that Respondent has no rights or legitimate interests in it.
3. The disputed domain name was registered on February 19, 2014, long after the Complainant's GAP Trademarks were first used in 1969, and long after the trademarks were first registered in the US. Given that the Complainant's adoption and extensive use of the GAP Trademarks predates the Respondent's registration of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name. The Respondent cannot demonstrate or establish any such right or legitimate interest.
4. Upon information and belief, the Respondent's only use of the disputed domain name is in connection with the conduct described above in association with what is nothing more than a parked website. This fails to demonstrate a bona fide offering of goods or services or a legitimate interest in the disputed domain name.
5. When users attempt to visit the Respondent's website at the disputed domain name, consumers will reasonably but mistakenly believe that the Respondent's website is somehow related to or approved by the Complainant, when that is not the case. It is certainly likely that someone looking for one of the Complainant's websites would see the website associated with the disputed domain name and not realize that the website was not affiliated with the Complainant.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:
1. The Respondent has no connection with the Complainant or with any legitimate use of its GAP Trademarks, which is evidence of bad faith.
2. The GAP Trademarks enjoy widespread recognition. Given the fame of the GAP Trademarks and the fact that the disputed domain name is so obviously connected with the Complainant's famous trademarks, the Respondent's bad faith may be presumed.
3. The disputed domain name is not currently associated with an active website, which has long been recognized as bad faith in and of itself.
4. Thus, the Complainant contends that it has met the requirements of the Policy by demonstrating not only its own legitimate interest in the GAP Trademarks as evidenced by its use and registration of the trademark, but also that the Respondent has no legitimate interests in the disputed domain name and that the Respondent's sole basis for using and registering the disputed domain name must have been to profit unlawfully from the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent did not comment on it.
After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel's discretion under the Policy
Paragraph 11(a) of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the contents of the website associated with the disputed domain name are in English; (c) the Respondent was able to communicate with the Complainant in an email dated October 23, 2014 and requested for a translation by the Complainant in respect of the Complaint or any of the annexes; and (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant's allegations.
Therefore the Panel is of the view that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the GAP Trademarks in connection with retail services in many countries in the world. Furthermore, the Panel finds that the Complainant has registered trademark rights in the GAP Trademarks in China, the country in which the Respondent appears to reside. The Panel finds that the Complainant's GAP Trademarks are well known in connection with retail services offered by the Complainant in many countries as well as in China.
In assessing the degree of similarity between the Complainant's trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant's products or services.
The disputed domain name consists of the Complainant's GAP mark in its entirety with the addition of the term "factory" and the gTLD suffix ".com". The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word "gap" which is identical to the Complainant's registered trademarks GAP. Given the fame and notoriety of the Complainant's GAP Trademarks, the addition of the term "factory" does not provide sufficient distinction from the Complainant's trade marks. Furthermore, it is also an accepted principle that the addition of suffixes such as ".com" being the gTLD is not typically a distinguishing factor.
Bearing in mind the following factors, in particular the distinctive character of the Complainant's GAP marks and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the GAP marks in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "gapfactory";
(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the GAP marks;
(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;
(4) On the contrary, the disputed domain name is currently connected to a parked website containing links to third-party websites that compete directly with the Complainant. The Panel finds that the Respondent therefore does not have the right to use GAP marks in the disputed domain name. Such a behaviour on the part of the Respondent clearly shows that it is not using the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain name.
(5) The Complainant and its GAP marks enjoy a widespread reputation and high degree of recognition as a result of their fame and notoriety in connection with retail services and have registered trademarks in many countries all over the world, including China. Consequently, in the absence of contrary evidence from the Respondent, the GAP marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes that the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to [the respondent] of the dispute, [the respondent's] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial 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 notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a formal Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its GAP marks, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name.
Furthermore, the Complainant has established a substantial presence on the Internet. The Complainant has also registered and used the domain names which incorporate the GAP marks such as , , and . A simple search on the Internet would reveal the presence of the Complainant's trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent is using the disputed domain name to connect to a parked website containing links to third-party websites that compete directly with the Complainant. Such behaviour on the part of the Respondent is indicative of bad faith registration and use as per paragraph 4(b)(iv) of the Policy. The Respondent could have explained its choice of the disputed domain name and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant's GAP marks and a lack of plausible explanation for the choice of incorporating the Complainant's well-known trademark in the disputed domain name, the conduct of the Respondent in using the disputed domain name to connect to a parked website containing links to third-party websites that compete directly with the Complainant, are certainly relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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 name be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: December 5, 2014
Full & Egal Universal Law Academy