The Complainant is The Gap, Inc., Old Navy (Apparel) LLC, Old Navy (ITM), Inc., United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Anonymize, Inc, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2021, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2021.
The Center appointed Evan D. Brown as the sole panelist in this matter on December 2, 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 Complainant is in the business of retail clothing. It owns the trademark OLD NAVY, which it has registered in a number of jurisdictions, including the United States (Reg. No. 1,928,001, registered on October 17, 1995).
According to the WhoIs records, the disputed domain name was registered on June 19, 2021.
The Respondent has used the disputed domain name to set up a website titled “OLDZAVY” and purports to offer clothing made by a third party (i.e., not the Complainant) for sale through the site.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly SimilarThis element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the OLD NAVY mark by providing evidence of its trademark registrations. The disputed domain name, being only one letter different from the Complainant’s well-known mark, is confusingly similarity for purposes of the Policy.
The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element. WIPO Overview 3.0, section 1.15. In some instances, however, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Guided by these principles, the Panel takes note of the content of the Respondent’s website – which purports to provide products competitive to the Complainant – to affirm the confusing similarity between the disputed domain name and the Complainant's mark.
The Panel finds that the Complainant has established this first element.
B. Rights or Legitimate InterestsThe Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainant asserts, among other things, that: (1) there has never been any relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization for the Respondent to use or register the disputed domain name; (2) the Complainant has not authorized the Respondent to use the OLD NAVY mark in a domain name, at any website, or for any other purpose; (3) there is no indication that the Respondent ever has been known by the disputed domain name; and (4) the Respondent’s use of the disputed domain name for an online apparel ecommerce website fails to demonstrate a bona fide offering of goods or services or a legitimate interest in the disputed domain name.
The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor.
Accordingly, the Panel finds that the Complainant has established this second element under the Policy.
C. Registered and Used in Bad FaithThe Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use.
Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
Because the Complainant’s OLD NAVY mark is so well-known, it is implausible to believe that the Respondent was not aware of that mark when it registered the disputed domain name. In the circumstances of this case, such a showing – made all the more evident from the disputed domain name being a typo of the Complainant’s mark – is sufficient to establish bad faith registration of the disputed domain name.
Bad faith use is clear from the Respondent’s activities of using the disputed domain name to set up a website that offers clothing via retail. The fact that clothing is being purportedly sold at the website associated with the disputed domain name indicates that the Respondent is targeting the Complainant. This use is in bad faith because it is an attempt to intentionally attract or divert, for commercial gain, Internet users to one or more competing websites in an effort to confuse and mislead consumers. Deutsche Lufthansa AG v. Domain Admin, Whois Privacy Corp / Ryan G Foo, PPA Media Services,WIPO Case No. D2015-2346; Net2phone Inc. v. Dynasty System Sdn Bhd,WIPO Case No. D2000-0679.
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
Evan D. Brown
Sole Panelist
Date: December 16, 2021