WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Gap, Inc. v. YongHoon Lee, SofTech
Case No. D2007-0386
1. The Parties
The Complainant is The Gap, Inc., of San Francisco, California, United States of America, represented by Cho & Partners, Republic of Korea.
The Respondent is YongHoon Lee, SoftTech, of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <gapkorea.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2007. On March 14, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On March 16, 2007, Dotster, Inc. transmitted by email to the Center its reply confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 30, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform domain name Dispute Resolution Policy (the “Policy”), 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, and the proceedings commenced on April 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on May 14, 2007. 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 was established in 1969 with its first store in San Francisco, California, United States of America.
As of April 2006, the Complainant had more than 3,000 stores in the United States of America, Canada, the United Kingdom, France, and Japan and selling apparels bearing the Gap’s trademarks in approximately 35 other countries including: Argentina, Australia, Austria, Bahamas, Brazil, Chile, Czech Republic, the Russian Federation, Denmark, Finland, Hong Kong SAR of China, Singapore, etc.
The Complainant strongly promotes its brands and products worldwide, and in 2005 alone it spent nearly USD512 million in advertisement and promotion.
The Complainant owns registrations for a number of trademarks: THE GAP, THE GAP & Design, GAP, GAP (stylized), GAP KIDS, BABY GAP, GAP ATHLETIC, GAP BODY & Design, GAP SHOES, etc. (collectively, the “GAP Marks”). Gap holds registrations for the GAP trademarks in more than 120 countries worldwide.
5. Parties’ Contentions
A. The Complainant contends as follows:
The domain name is confusingly similar to the famous GAP Marks. The domain name is made up of one of the Complainant’s core trademarks, “GAP,” and a term designating a country “Korea.” The term “Korea” as a country designation is descriptive and merely modifies the term “GAP”. Therefore, the domain name is confusingly similar to the GAP Marks.
While the Respondent was never authorized or permitted to use the GAP Marks or register the domain name by the Complainant, anyone encountering the Respondent’s use of the phrase “gapkorea” on the domain name is likely to believe incorrectly that it identifies goods or services from, authorized by or in some way connected with the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name <gapkorea.com>.
The Respondent has not been commonly known by the domain name.
The registration for <gapkorea.com> merely performs a forwarding function, and the Respondent itself does not provide substantive content, offer services or products.
The Respondent’s use of the domain name cannot be considered a bona fide offering of goods or services.
The Respondent registered the domain name in bad faith.
The Complainant’s trademark registrations are conveniently accessible to the public via Korean language sites (such as “www.kipris.or.kr”), or through the Korean Intellectual Property Office.
Given the fame of the GAP Marks in the Republic of Korea, the Respondent’s registration of the domain name was for the purpose of preventing the Complainant from reflecting the mark in a corresponding domain name.
Where a domain name is “so obviously connected with such a well-known name and products”, “its very use by someone with no connection with the products suggest opportunistic bad faith.”
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds 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, under Paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as it considers appropriate (see Paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has registered the GAP Marks in various countries in connection with numerous classes of goods and services. The domain name wholly incorporates the Complainant’s distinctive trademark and as such creates sufficient similarity to be confusingly similar (Paragraph 4(a) of the Policy). The Panel notes that the term “Korea” as a country designation is descriptive and merely modifies “GAP”.
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several decisions of WIPO Panels have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, it has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see Paragraph 2), a well-established principle is that when someone registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s GAP Marks are widely known worldwide, it is very unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that it was infringing the Complainant’s trademarks.
Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United States of America would have made the Complainant’s registrations known to the Respondent.
The Respondent is, in using the domain name, forwarding Internet users to other websites. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Big Dog Holding, Inc. v. Day, NAF Claim No. FA 93554). In addition, as the domain name is so obviously connected to widely known marks and products, its use by someone with no connection to the products is evidence of opportunistic bad faith (see Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. net, WIPO Case No. D2000-0226).
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly the Panel concludes that the Respondent registered and is using the domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <gapkorea.com>, be transferred to the Complainant.
Thomas P. Pinansky
Dated: June 1, 2007