Complainant is The Gap, Inc. of San Francisco, California, United States of America, represented by Cooley Godward Kronish LLP, United States of America.
Respondent is Texas Internet of Dallas, Texas, United States of America.
The disputed domain name <olnavy.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2009. On February 2, 2009, the Center transmitted by email to the Registrar, Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On February 4, 2009, the Registrar transmitted by email to the Center its verification response. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 2, 2009.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 11, 2009. 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.
Complainant is the owner of many registered trademarks relating to its OLD NAVY brand, including U.S. Reg. No. 2,006,872 (OLD NAVY, issued October 8, 1996) and U.S. Reg. No. 2,207,288 (OLD NAVY, issued December 1, 1998), which cover use of the mark in conjunction with the sale of many types of clothing.
The disputed domain name was registered on November 30, 2000. The disputed domain name resolves to a page displaying sponsored links to the websites of Complainant and several of its competitors in the clothing retail business. The page also contains additional advertising.
Complainant contends that the <olnavy.com> domain name is confusingly similar to its OLD NAVY mark and that customers could be misled as to the source of the goods offered on the <olnavy.com> web page.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and uses the disputed domain name in bad faith. Complainant has introduced evidence that Respondent has registered a multitude of domain names that are slight variations on famous marks.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel concludes, first, that Complainant has sufficiently shown that it has rights in its OLD NAVY mark. Complainant owns United States federal registrations for this mark, which creates a presumption of ownership and validity.
The relevant portion of the disputed domain name differs from the mark only in that it is missing the letter “d.” Numerous panels have found that the omission of a single letter gives rise to confusing similarity. See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094. (“This is a typical case of ‘typo-squatting' where the infringing name is one letter less than or different from the Complainant's mark. These attempts have been disapproved of by various WIPO Panelists.”) “Ol'” is also a common abbreviation of the word “Old”. This Panel concludes for the foregoing reasons that the disputed domain name is confusingly similar to Complainant's mark.
Respondent has no rights or legitimate interest in the domain name. Complainant asserts, unrebutted, that it has never authorized Respondent to use the mark, nor to register or use the disputed domain name. Complainant also asserts, again unrebutted, that it has no business relationship with Respondent.
It does not appear that Respondent has ever been commonly known by the disputed domain name, nor that Respondent is making a legitimate non-commercial or fair use of the domain name.
The disputed domain name was registered well after Complainant registered the OLD NAVY marks and the <oldnavy.com> domain name. Respondent's website offers for sale goods similar to the range sold by Complainant in conjunction with its registered marks, namely clothing. Respondent has also apparently engaged in a pattern of registering domain names that are slight variations on famous marks. The Panel finds that registration and use in bad faith have been established through Respondent's attempt to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship or affiliation of the website, per paragraph 4(b)(iv) of the Policy.
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, <olnavy.com>, be transferred to Complainant.
Michael A. Albert
Dated: March 25, 2009