The Complainants are The Gap, Inc. and Athleta, Inc., United States of America (“USA”) (collectively referred to as the “Complainants”), represented by Fross Zelnick Lehrman & Zissu, PC, USA.
The Respondent is 朱亚磊 (Ya Lei Zhu), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2021, 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 Complainants on September 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on September 15, 2021.
On September 13, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 15, 2021, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on November 4, 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 BackgroundThe Complainants are connected companies within the GAP group of companies. Particularly, The Gap, Inc. (the “First Complainant”) is the parent company to Athleta, Inc (the “Second Complainant”), after having acquired it in 2008. The Complainants are part of a group of companies commercializing fashion retail products. The Second Complainant is a public benefit corporation headquartered in the USA and was established in 1998, when it launched the ATHLETA brand for women’s apparel. The Second Complainant opened its first retail store in Mill Valley, California, USA in 2011 and now has over 210 retail stores throughout the USA, in addition to its e-commerce website hosted at “www.athleta.com”. The Complainants have spent significant resources to advertise the ATHLETA brand in several media outlets, reaching tens of millions of people, including, but not limited to, Women’s Health, People, Self, Glamour, and Elle. Furthermore, the Complainants have also obtained a large social media following and a strong Internet presence. For instance, the Complainants’ official website hosted at “www.athleta.com” was visited by approximately 150 million USA visitors over the past year.
The Complainants provide evidence that the Second Complainant owns a large trademark portfolio for ATHLETA (word and logo marks), including, USA trademark registration number 3931221, registered on March 15, 2011, and USA trademark registration 2474894, registered August 7, 2001. The Second Complainant also owns trademark registrations in a number of jurisdictions around the world for its ATHLETA mark, including in China, where the Respondent is allegedly located, see for example Chinese trademark registration number 31915472 registered on June 28, 2019.
The disputed domain name was registered on February 23, 2021, and is therefore of a later date than the abovementioned trademarks of the Complainants. The Complainants submit evidence that the disputed domain name directed to an e-commerce website which copied images of the Complainants’ ATHLETA branded products, its advertising, and its product listings from the website hosted at “www.athlete.gap.com”, and also provide evidence that parts of such website solicited customer login credentials. However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage.
5. Parties’ Contentions A. ComplainantThe Complainants essentially contend that the disputed domain name is confusingly similar to their trademarks for ATHLETA, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainants claim that their ATHLETA trademark is distinctive and well known, and submit company information and marketing materials. The Complainants particularly contend that the Respondent used the disputed domain name, including the ATHLETA trademark and product images on the website linked to the disputed domain name (before it was taken down), for the purpose of misleading consumers and for potential phishing activities. The Complainants state that there are no justifications for such use of their trademarks in the disputed domain name, and contend that such use does not confer any rights or legitimate interests in respect of the disputed domain name. Finally, the Complainants also contend that the Respondent has engaged in a pattern of bad faith cybersquatting.
The Complainants request that the disputed domain name be transferred to the First Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 First Preliminary Issue: Consolidation of ComplainantsThe Complainants in this administrative proceeding request consolidation in regard to the Complainants. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states in section 4.11.1: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements: the Second Complainant is the owner of a series of registered trademarks for ATHLETA and the First Complainant is the parent company to the Second Complainant. As such, the Panel concludes that all Complainants are the target of common conduct by the Respondent and both have common grievances regarding the use of the ATHLETA trademarks in the disputed domain name by the Respondent. The Panel accepts that permitting the consolidation would be fair and equitable to all Parties involved and would safeguard procedural efficiency. The Panel therefore grants the request for consolidation of the Complainants.
6.2. Second Preliminary Issue: Language of the administrative proceedingPursuant to paragraph 11(a) of the Rules, 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.
The Complainants state that the Registration Agreement is published in both Chinese and English. However, the Registrar confirmed in its verification response on September 13, 2021, that the language of the Registration Agreement is Chinese. Nevertheless, the Complainants filed their Complaint and amended Complaint in English, and request that English be the language of this administrative proceeding. The Respondent did not comment on the language of the proceeding and did not submit arguments on the merits of this proceeding.
The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainants’ request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center to present its response and arguments in either English or Chinese, but chose not to do so); the fact that the disputed domain name contains the Complainants’ trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; the fact that the website linked to the disputed domain name was exclusively in English (before it was taken down), from which the Panel deducts that the Respondent is capable of understanding and communicating in English; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainants. In view of all these elements, the Panel grants the Complainants’ request, and the language of this administrative proceeding shall be English.
6.3. Discussion and Findings on the meritsThe Policy requires the Complainants to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly SimilarThe Panel finds that the Complainants have shown that they have valid rights in the mark ATHLETA, based on their intensive use and longstanding registration of the same as trademarks.
As to confusing similarity of the disputed domain name with the Complainants’ marks, the Panel considers that the disputed domain name consists of two elements, namely the Complainants’ ATHLETA trademark followed by the abbreviation “US”, which is commonly understood to mean “United States”. According to the WIPO Overview 3.0, section 1.8, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”. The Panel concludes that the disputed domain name contains the entirety of the Complainants’ trademarks for ATHLETA, which remains easily recognizable as its only distinctive element. The Panel finds that the addition of the geographical term “US” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ registered trademark for ATHLETA, and that the Complainants have satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate InterestsOn the basis of the evidence and arguments submitted, the Panel finds that the Complainants make out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainants, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainants’ trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.
Upon review of the facts and evidence provided by the Complainants, the Panel notes that the disputed domain name formerly directed to an e-commerce website which copied images of the Complainant’s ATHLETA products, advertising, and product listings from the website hosted at “www.athlete.gap.com”, without any disclaimer as to the Respondent’s (absence of) relationship with the Complainants. The Panel also notes that such website solicited customer login credentials. The Panel finds that these elements show that the Respondent’s intention was not to be a bona fide provider of goods or services under the disputed domain name, nor making legitimate noncommercial use or fair use of the Complainants’ trademarks. Instead, the Respondent’s intention was to obtain unlawful commercial gains from creating confusion by incorporating the Complainants’ well-known ATHLETA trademark into the disputed domain name, or from potential phishing activities.
However, on the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei),WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui),WIPO Case No. D2021-1685).
Finally, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks and containing the entirety of the Complainant’s trademark combined with the geographic term “US”, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant (see WIPO Overview 3.0, section 2.5.1).
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainants have satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad FaithThe Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainants’ well-known trademark, by incorporating such trademark in its entirety, to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainants’ trademark, the Panel finds that the registration of the disputed domain name clearly targeted such well-known trademark, and that the Respondent knew, or at least should have known, of the existence of the Complainants’ trademarks. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owns registered trademarks in ATHLETA and used these extensively. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.
As to use of the disputed domain name in bad faith, the Complainants provide evidence that the disputed domain name directed to an e-commerce website which copied images of the Complainant’s ATHLETA branded products, advertising, and product listings from the website hosted at “www.athlete.gap.com”, without any disclaimer as to the Respondent’s (absence of) relationship with the Complainants. The Panel also notes that such website solicited customer login credentials, potentially for phishing activities. The Panel accepts that these elements show the bad faith intention on the part of the Respondent to obtain unlawful commercial gains from using the Complainants’ famous ATHLETA trademark in the disputed domain name.
However, on the date of this decision, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the following elements: the fact that the disputed domain name is nearly identical to the Complainants’ trademarks, the high degree of distinctiveness and fame of the Complainants’ trademarks, and the unlikelihood of any good faith use to which the disputed domain name might be put by the Respondent. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent would not prevent a finding of bad faith. Moreover, the Panel also finds that the Complainants sufficiently prove that the Respondent has been engaged in a pattern of trademark abusive registrations. In this regard, the Panel refers to the reverse WhoIs results submitted by the Complainants, from which it can be concluded that the Respondent has registered no less than 382 domain names since 2017, including domain names containing famous third party trademarks such as MICHAEL KORS and PANDORA. The Panel also notes that the Respondent has been the respondent in prior UDRP decisions, where the Respondent had engaged in similar acts of cybersquatting, see for instance Adam Smith v. 朱亚磊 (Ya Lei Zhu), WIPO Case No. D2021-0894. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainants have satisfied the requirements of the third element under the Policy.
7. DecisionFor 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
Deanna Wong Wai Man
Sole Panelist
Date: November 15, 2021