The Complainant is The Gap, Inc., of San Francisco, United States of America (“USA”), represented by Cooley Godward Kronish LLP, USA.
The Respondent is ATTN: GAPCASTINGCALL.COM. c/o Network Solutions of Zimbabwe.
The disputed domain name, <gapcastingcall.com > (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on January 28, 2009, and in hard copy on January 30, 2009. The Complaint as originally filed identified Domains by Proxy, Inc., as respondent.
The Center transmitted its request for registrar verification to the Registrar by email on January 28, 2009. The Registrar replied on January 29, 2009, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it but the respondent identified in the Complaint was not the registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the registration, that the Domain Name would expire on February 3, 2010, and would remain locked during this proceeding, and that the registration agreement was in English and contained a submission by the registrant to the jurisdiction of the courts at the location of the Registrar's principal office for court adjudication of disputes concerning or arising from the use of the Domain Name. The Registrar provided the contact details in respect of the Domain Name on its Whois database, which identified the Respondent as the registrant.
By email on February 3, 2009, the Center informed the Complainant that the Registrar had identified a different registrant of the Domain Name to that named in the Complaint and invited the Complainant to file an amendment to the Complaint. The Complainant filed an amended Complaint by email on February 4, 2009, and in hard copy on February 6, 2009.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2009.
In accordance with the Complainant's request for a three-member Panel, the Center appointed Jonathan Turner, Sandra A. Sellers and Charné Le Roux as panelists in this matter on March 30, 2009. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Complainant's group carries on an international business selling clothing under the mark GAP. It has more than 150,000 employees and operates more than 1.540 stores. Its sales in North America in 2007 were nearly USD 4.5 billion. In 2008 it spent nearly USD496 million advertising and promoting its GAP brand.
The Complainant has registered GAP and other marks comprising GAP together with descriptive or graphic elements as trademarks in more than 120 countries. It operates websites at “www.gap.com”, “www.gapkids.com and www.babygap.com”.
Since 2002/3 the Complainant has run an annual contest under the mark GAP CASTING CALL to find babies and children who will be models for its BABY GAP and GAP KIDS products. It encourages parents or guardians to submit photographs of their children, from which winners are selected by popular vote for photo shoots and/or travel packages to San Francisco. More than 500,000 votes were cast in the first competition. The Complainant's web page containing information about the competition at “www.gap.com/castingcall” had over 5.2 million visitors in 2008-9.
The Respondent registered the Domain Name on February 3, 2006, Prior to September 2008, the Domain Name resolved to a website at “www.showbizltd.com” which contained information and product offerings related to developing a career in show business. Some of the content of that website was identical to content of the website at “www.commercialkids.com”, which offers and advertises services and goods relating to acting and modeling jobs for children.
On September 15, 2008, the Complainant wrote a cease and desist letter to the operator of “www.showbizltd.com” using the contact details provided on it. The Complainant did not receive any reply to that letter.
On September 25, 2008, the Domain Name resolved to a link farm. However, by December 5, 2008, it resolved to a website at “www.gapcastingcall.com” which was similar or identical to that at “www.commercialkids.com”. As of January 15, 2009,the Domain Name has resolved to the website at “www.commercialkids.com”.
The Complainant contends that the Domain Name is confusing similar to its GAP mark, which the Domain Name incorporates in its entirety accompanied only by the generic term “Casting Call”. The Complainant also asserts that it has common law rights in the mark GAP CASTING CALL and that the Domain Name is identical to this mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points out that the Respondent registered the Domain Name long after it had well-established rights in the GAP mark and years after it had first used the mark GAP CASTING CALL for its annual model search and promotional event.
The Complainant states that the Respondent is not an authorized dealer, distributor or licensee of the Complainant, and that the Respondent is not commonly known by the Domain Name, as is evidenced by the lack of any reference to “Gap Casting Call” on the web page to which it resolves. According to the Complainant, the Respondent's use of the Domain Name in connection with its products does not constitute a bona fide use for the purpose of the UDRP.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. According to the Complainant, given its prominence worldwide and on the Internet, the Respondent must have known that incorporating its GAP mark in the Domain Name would be likely to cause Internet users to assume that a website at “www.gapcastingcall.com” was sponsored by or affiliated with the Complainant.
The Complainant contends that the Respondent has used and is using the Domain Name to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent's products, which are directly related to and competitive with the Complainant's own casting call operated under the GAP CASTING CALL mark. The Complainant also refers to the Respondent's use of a privacy shield and its failure to reply to the Complainant's cease and desist letter as further evidence of bad faith.
The Complainant requests that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove
(i) that the Domain Name is identical or confusingly similar to a mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondent's default as it considers appropriate. This would include the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the mark GAP and that it has unregistered rights in the mark GAP CASTING CALL.
The Panel further finds that the Domain Name is confusingly similar to the mark GAP and identical for the purposes of the UDRP to the mark GAP CASTING CALL. In the Panel's view, many Internet users would suppose that the Domain Name identifies a website of the Complainant promoting its GAP CASTING CALL talent contest.
The first requirement of the UDRP is satisfied.
The Panel considers that the Respondent's use of the Domain Name is not in connection with a bona fide offering of goods or services such as to confer on the Respondent rights or legitimate interests for the purposes of the UDRP. On the contrary, it is a use of the Domain Name in bad faith, which takes unfair advantage of the reputation of the Complainant's marks and of the Domain Name's identity to or confusing similarity with those marks, in order to divert Internet users seeking information about the Complainant and its talent competition to the Respondent's website and the competitive offerings promoted or sold through it.
The Panel further finds that the Respondent is not commonly known by the Domain Name, that it is not making legitimate noncommercial or fair use of the Domain Name, that it is not authorized by the Complainant to use the Domain Name, and that there is no other basis on which it could claim to have rights or legitimate interests in respect of the Domain Name.
The second requirement of the UDRP is satisfied.
The Panel finds on the evidence that the Respondent is using the Domain Name intentionally to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website and the products and services offered and promoted through it. In the Panel's view, Internet users seeking information about the Complainant's competition are liable to be diverted by confusion between the Domain Name and the Complainant's marks to the Respondent's website, where services and products relating to acting and modeling jobs for children are offered and promoted for commercial gain, in which the Respondent no doubt shares.
In accordance with paragraph 4(b)(iv) of the UDRP, these circumstances constitute evidence of registration and use of the Domain Name in bad faith. There is no evidence displacing this presumption. The third requirement of the UDRP is satisfied.
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, <gapcastingcall.com>, be transferred to the Complainant.
Sandra A. Sellers
Charné Le Roux
Dated: April 20, 2009