The Complainant is The Gap, Inc., Old Navy (Apparel), LLC, Old Navy (ITM), Inc., Gap (Apparel), LLC, Gap (ITM) Inc., United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“US”).
The Respondent is Registration Private, Domains By Proxy, LLC, US / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 16, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2021. The Center appointed Jane Lambert as the sole panelist in this matter on February 9, 2021. 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 companies are The Gap, Inc. and its subsidiaries Old Navy (Apparel), LLC, Old Navy (ITM), Inc., Gap (Apparel), LLC and Gap (ITM) Inc. They are referred to collectively as “the Complainant” in the Amended Complaint and the Panel will follow that designation. The Complainant is one of the world’s leading retailers of clothing, accessories, personal care products and other merchandise. It markets those goods under several brands the oldest of which is GAP. It has used that brand since 1969. Another is OLD NAVY which it introduced in 1994. It is now in use in over 1,000 sales outlets around the world. The Complainant has registered the words GAP and OLD NAVY as trade marks in national and regional intellectual property offices wherever it trades. For example, it has registered the word GAP with the US Patent and Trademark Office as a trade mark for “clothing-namely, pants, jeans, skirts, vests, jackets, overalls, jumpers, dresses, sweaters, t-shirts, belts, hats, shorts, and halter tops” in International class 25 under U.S. Reg. No. 1,129,294 with effect from January 15, 1980. Similarly, it has registered the words OLD NAVY with the US Patent and Trademark Office as US Reg. No. 1,928,001 for “clothing, namely jeans” in international class 25 with effect from October 17, 1995. In addition to its trade mark registrations, consumers and traders associate the marks GAP and OLD NAVY in relation to clothing, accessories, personal care products and similar merchandise with the Complainant and none other. That is because billions of dollars of goods have been sold under those brands over the years. For instance, in the latest quarter, sales under the GAP brand were just under a billion US dollars and sales under the OLD NAVY brand exceeded USD 2.1 billion. Those sales have been achieved by massive expenditure on advertising and promotions under those brands in the press, broadcasting and over the Internet. The Respondent appears to consist of two entities. The first named entity operates a privacy service and the second appears to be its client. The Complainant says that the disputed domain name has been used as a Uniform Resource Locator (“URL”) for a web page with sponsored links and searches. A screen dump of that page is exhibited to the Complaint marked “K”. The Panel typed in the disputed domain name in browser on February 21, 2021, and found a similar web page. The Complainant states that it has never licensed, permitted or authorized the Respondent to register the disputed domain name or use it in the way that it has. It adds that it is aware of no circumstances that would entitle the Respondents to take those steps. It alleges that the Respondent is a “serial cybersquatter” that has been involved in over 100 domain name disputes nearly all of which have gone against it. The Complainant has cited a number of cases in which the Respondent was unsuccessful. The disputed domain name was registered on November 23, 2020. 5. Parties’ Contentions A. Complainant The Complainant claims the transfer of the disputed domain name on the following grounds: - it has rights in the GAP and OLD NAVY trade marks; The Complainant points to its extensive portfolio of trade mark registrations in Exhibits D and E and to findings of US courts and tribunals that its trade marks are famous. It also mentions its marketing and promotional activities and its reputation in the field of clothing retail which seems to indicate that it could bring proceedings for passing off or some similar cause of action in many if not all jurisdictions. It notes that the disputed domain name incorporates, in their entirety, the Complainant’s registered GAP and OLD NAVY trade marks. It submits that the inclusion of the term “secure” actually increases the likelihood of confusion owing to the similarity between the disputed domain name and a legitimate domain name of the Complainant that combines the “secure” and “oldnavygap” elements. The Complainant observes that the disputed domain name was registered long after adoption and extensive use of the GAP and OLD NAVY marks. There are no circumstances that would entitle the Respondent to register or use the disputed domain name. There is no evidence that the Respondent has ever been known by the disputed domain name or by any similar name. The disputed domain name is being used as a parking site for sponsored links and searches. It is contended that unauthorized registration of a well-known trade mark is of itself an act of bad faith. Referring to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Complainant argues that passive holding such as use as a parking site for sponsored links and searches can evidence registration and use in bad faith. Further, the Respondent has a history of cybersquatting. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The agreement by which the disputed domain name was registered incorporated by reference the following provision of the Policy: “a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that The Panel finds that the first element is present. To satisfy the requirement of paragraph 4(a)(i) of the Policy, it is usually enough to point to just one trade mark belonging to a complainant which may be registered for any goods or services in any country or territory of the world that is identical or confusingly similar to the disputed domain name. As the disputed domain name incorporates OLD NAVY and GAP trade marks it is necessary in this case to prove rights in both trade marks. The Complainant has complied with that requirement by citing its registration of GAP as US trade mark No. 1,129,294 and OLD NAVY as US trade mark No. 1,928,001. Accordingly it is unnecessary to refer to any of the other registrations in the Complaint or in Exhibits “D” or “E”. As to the requirement that the disputed domain name should be identical or confusingly similar to the Complainant’s trade marks, the Panel agrees with the Complainant that the combination of the trade marks with the adjective “secure” does prevent a finding of confusing similarity under the first element. Such adjective is often used in electronic commerce to indicate a place where additional security measures are in force to protect a customer’s personal data, take a payment or for some other purpose. It follows that the disputed domain name is confusingly similar to trade marks in which the Complainant has rights. B. Rights or Legitimate Interests The Panel holds that the second element is present. The second paragraph of section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides the following guidance: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In view of the Complainant’s extensive portfolio of trade mark registrations and its reputation and goodwill in then GAP and OLD NAVY trade marks, it would be difficult (if not impossible) for another business to register the disputed domain name anywhere in the word without the Complainant’s license. The Complainant has denied that it has licensed, permitted or authorized the Respondent to register and use the disputed domain name. It has also stated that it knows of no circumstances that could justify such registration or use. That is enough to shift the burden of production to the Respondent. The Respondent has enjoyed ample opportunity to discharge that burden but has failed to take advantage of that opportunity. Consequently, the Complainant is deemed to have satisfied the second element. C. Registered and Used in Bad Faith The Panel is satisfied that the third element is present. Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is as follows: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.” The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trade marks which satisfies the requirement that the Respondent has created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location. The Complainant has used and continues to use the disputed domain name as the URL for a parking page with sponsored links and searches. Whenever one of those links or searches is clicked a fee is paid or some other benefit accrues to the Respondent or some other person. That satisfies the other requirement of paragraph 4(b)(iv) of the Policy. In the absence of any countervailing evidence, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Panel has considered but is not persuaded by the Complainant’s other arguments. She acknowledges the evidence of previous cybersquatting and agrees that it might constitute “a pattern of such conduct” within the meaning of paragraph 4(b)(ii) of the Policy which technically requires that the registration of the disputed domain name should prevent the owner of the trade from reflecting the mark in a corresponding domain name. The Panel agrees with the Complainant that passive holding can constitute registration and use in bad faith but the use of a parking site with sponsored links and searches is a step beyond passive holding. While the Panel agrees that the registration of a well-known mark as a domain name often indicates bad faith, it is not eiusdem generis the circumstances set out in paragraph 4(b) of the Policy which incorporates safeguards for all parties. It is possible in some albeit limited circumstances to register a domain name that incorporates a well-known trade mark plus an additional term for a legitimate fair use purpose. That is not the case here however. The hurdles that are incorporated into each of the circumstances in paragraph 4 (b) of the Policy are moreover not high ones and it is always possible for justice to be done in a case such as this by looking at matters holistically. Treating the mere registration of a domain name that incorporates a well-known trade mark as an act of bad faith in itself would effectively drive a coach and horses through paragraph 4(b) of the Policy if the rest of the circumstances are not considered. For that reason the Panel prefers to base her finding on other grounds. The Complainant is deemed to have satisfied the third element. 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 Jane Lambert
- the disputed domain name is confusingly similar to the Complainant’s GAP and OLD NAVY trade marks;
- the Respondent has no rights or legitimate interest in the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
Sole Panelist
Date: February 23, 2021
Full & Egal Universal Law Academy