WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gap (Apparel) LLC v. c/o Network Solutions, Akinsanya Odunayo Emmanuel, Salam Hassan
Case No. D2013-2126
1. The Parties
The Complainant is Gap (Apparel) LLC of San Francisco, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are c/o Network Solutions of Drums, Pennsylvania, United States of America; Akinsanya Odunayo Emmanuel of Dubai, United Arab Emirates; Salam Hassan of Dubai, United Arab Emirates.
2. The Domain Names And Registrar
The disputed domain names <gapfranchisee.com> and <gapincfranchise.com> are registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2013. On December 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 9, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Akinsanya Odunayo Emmanuel is listed as the registrant of <gapincfranchise.com> and providing the contact details and disclosing registrant and contact information for the disputed domain name <gapfranchisee.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 16, 2013.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 13, 2014.
The Center appointed Ross Wilson as the sole panelist in this matter on January 21, 2014. 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, a wholly owned subsidiary of Gap, Inc., was established in 1969 in the United States. Gap, Inc. is a global retailer of clothing, personal care products and other merchandise. In 2013 it had 136,000 employees in over 3,000 store locations. Its sales for the period from 2001 to 2012 were USD 76.6 billion. The Complainant invests substantial time, effort and money in advertising and promoting the GAP mark through numerous major United States publications, television, social media and networking websites. The Complainant operates in two segments; its own stores in the United States, United Kingdom, Canada, France, Japan and Europe and its franchisee stores throughout Asia, Australia, Eastern Europe, Latin America, Africa and the Middle East (including the United Arab Emirates, where the Respondents appear to be located).
The GAP trademark was first registered in 1980 and has subsequently been registered in numerous countries around the world including the United Arab Emirates.
The Respondents’ disputed domain names were registered on August 25, 2013 and November 11, 2013.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s registered trademark. It contends that there is no evidence that the Respondents have any rights or legitimate interests in the disputed domain names. Also, the Complainant contends that the Respondents registered and used the disputed domain names in bad faith in order to confuse Internet users as to the disputed domain names’ association with the Complainant, to defraud potential franchisees and to falsely suggest a connection with the Complainant.
The Respondents did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issue: Consolidation Of Multiple Respondents
The Complainant has requested that the Respondent parties be consolidated into a single Complaint. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) panels have articulated principles governing the question of whether or not a complaint filed under the UDRP by multiple complainants be brought against one or more respondents. The consolidation criteria to be met in the case of complaints brought against more than one respondent are whether or not the domain names or the websites are subject to common control and whether the consolidation would be fair and equitable to all parties.
In this case establishing common control has been primarily based on the use of the same street address in Dubai as shown in the website contact details for <gapfranchisee.com> and the street listed by the registrant of <gapincfranchise.com>. Further evidence of common control is demonstrated through the almost identical layout of the websites and the fact that both have utilized many of the same images and videos derived from the Complainant’s website and advertisements.
Accordingly, the Panel finds the criterion of common control for consolidating the Respondents is met. Further, the Panel considers that the consolidation would be fair and equitable to all parties and contribute to procedural efficiency. The Panel will proceed to a decision on the merits of the Complaint regarding the disputed domain names.
7. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names consist of the Complainant’s trademark in its entirety together with the words “franchisee”, “incfranchise” and the generic Top-Level Domain (“gTLD”) extension “.com”. With respect to the gTLD extension “.com” the general rule is that it can be disregarded when considering whether a trademark is identical or confusingly similar to a domain name.
It has been commonly held in previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306). The addition of the words “franchisee” and “incfranchise” are generic or descriptive and cannot be considered distinctive. As found in Revlon Consumer Products Corporation v. Amar Fazil, WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc./Jerald Blume, WIPO Case No. D2004-0871, the addition of a descriptive term does not serve to distinguish a disputed domain name, but serves to accentuate rather than to diminish the confusing similarity.
The Panel finds that the Complainant’s trademark is readily recognisable within the disputed domain names. Therefore, the Complainant has proven under the circumstances that the disputed domain names are confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has denied granting the Respondents any authorisation by which they could own or use any domain name registrations which are confusingly similar to the GAP mark. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”.
There is no evidence before the Panel to show that the Respondents have any rights or legitimate interests in the disputed domain names. The Respondents have chosen to use disputed domain names which are confusingly similar to the Complainant’s mark without authorization from the Complainant. Based on the evidence provided by the Complainant, the disputed domain names were intended to mislead potential franchisees and divert them to the Respondents’ websites for their own commercial benefit. The Panel considers no rights or legitimate interests derive from such use of the disputed domain names.
The Panel considers the Respondents are not commonly known by the disputed domain names. See Areva v. Domains by Proxy, Inc./ Sheng Xiang, WIPO Case No. D2011-0061, where the panel concluded that when the respondent registered the domain name, it must have known that it was a trademark of the complainant and deliberately registered the domain name precisely because it would be recognized as such. As stated by the panel in Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615, “[m]anifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Despite the opportunity provided through this administrative proceeding, the Respondents have chosen not to rebut the Complainant’s prima facie case or assert any rights or legitimate interests in the disputed domain names.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names. The Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain names as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the disputed domain names in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Respondents’ copying of images and videos from the Complainant’s website demonstrates actual knowledge of the Complainant’s rights in the trademark GAP when the disputed domain names were registered. The Complainant points out that using that knowledge the Respondents sought to appropriate the reputation and goodwill of the Complainant by registering confusingly similar domain names for the purposes of commercial benefit.
The Panel considers that the Complainant has made a case that the Respondents have registered and used the disputed domain names in bad faith. In the Panel’s view, the Respondents’ registration of the disputed domain names represents a deliberate disregard of the Complainant’s rights. In this Panel’s assessment, the Respondents clearly knew of the Complainant’s mark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain names. As stated by the panel in Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100, “It is therefore inconceivable…that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection of the domain names is so obviously connected to the complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.
The evidence provided shows the Respondents’ websites incorporated extensive material from the Complainant’s website and advertisements. The Panel considers the Respondents’ use of the disputed domain names to divert Internet user traffic to websites designed to mimic the Complainant’s website clearly represents bad faith. Overall the Panel finds that the disputed domain names were registered and used by the Respondents in an intentional attempt to benefit from the reputation and goodwill of the Complainant’s mark for commercial benefit.
Noting that the Respondents have not rebutted any of the Complainant’s contentions and have no demonstrable rights or legitimate interests in the disputed domain names, the Panel is satisfied that the Respondents’ conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <gapfranchisee.com> and<gapincfranchise.com> be transferred to the Complainant.
Date: February 4, 2014