WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banana Republic (Apparel) LLC and Banana Republic (ITM) Inc. v. Domain Brokers and Shaun Hedges
Case No. D2015-0627
1. The Parties
The Complainants are Banana Republic (Apparel) LLC and Banana Republic (ITM) Inc. (collectively, “Banana Republic” or “Complainant”) of San Francisco, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are Domain Brokers of St. John’s, Saint Vincent and the Grenadines and Shaun Hedges with an unknown location. (collectively, “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <bananarepublicfactory.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2015. On April 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2015.
The Center appointed Eduardo Machado as the sole panelist in this matter on May 18, 2015. 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
Complainant is a well-known fashion and accessories company, in operation since 1978. Complainant holds around 1,800 trademark registrations for its BANANA REPUBLIC family of marks in the United States and approximately 160 other countries and jurisdictions around the world. In 2014, almost USD3 billion worth of BANANA REPUBLIC merchandise was sold worldwide. Complainant also conducts business at <bananarepublic.com> and various other domain names incorporating its BANANA REPUBLIC mark.
Complainant advertises its BANANA REPUBLIC and BANANA REPUBLIC FACTORY STORE products extensively, operating social media for its BANANA REPUBLIC FACTORY STORE brand at social media and networking websites such as Facebook and Twitter.
The disputed domain name was registered on October 25, 2005 and is currently used in connection with a parking website with advertising links promoting third parties’ goods and services.
5. Parties’ Contentions
The disputed domain name is confusingly similar to Complainant’s BANANA REPUBLIC marks.
Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant is required to prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the BANANA REPUBLIC marks, being the owner of the BANANA REPUBLIC word mark and other marks incorporating the expression “Banana Republic” in many jurisdictions around the world, as well as the owner of the domain name <bananarepublic.com> since 1995.
The Panel agrees that the deletion of the term “store” from Complainant’s BANANA REPUBLIC FACTORY STORE trademarks does not distinguish the disputed domain name from Complainant’s trademarks.
With regard to the addition of the generic Top-Level Domain (“gTLD”) “.com”, it is widely accepted that it may be disregarded when assessing the issue of confusing similarity between a trademark and a domain name. It is well-settled in UDRP decisions that “the applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.2). In this case, the use of the gTLD “.com” does not diminish the risk of confusion between the disputed domain name and Complainant’s trademarks.
Considering the evidence provided by Complainant, the Panel agrees that Complainant has acquired a significant reputation and goodwill in its trademarks both in the United States and internationally.
Therefore, the Panel finds that the disputed domain name <bananarepublicfactory.com> is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by verifying if Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name. If Complainant makes it, the burden of showing rights or legitimate interests in the disputed domain name shifts to Respondent. Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Panel notes that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name. However, by failing to respond to the Complaint, Respondent did not pick up its burden to demonstrate rights or legitimate interests.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests:
(i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Panel finds that Respondent cannot demonstrate or establish any rights or legitimate interest in the disputed domain name. In fact, it is clear that Complainant and Respondent have no relationship that would give rise to a license, or other rights by which Respondent could own or use a domain name incorporating Complainant’s trademark.
Furthermore, the Panel finds that Complainant’s adoption and extensive use of the BANANA REPUBLIC marks predates Respondent’s registration of the disputed domain name.
Therefore, the Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel considers that it is implausible that Respondent did not have knowledge of the Complainant’s BANANA REPUBLIC trademarks at the time of registering the disputed domain name.
The Panel notes that the disputed domain name resolves to a sponsored listings page containing links and/or references to the Complainant’s competitors and also to the Complainant’s BANANA REPUBLIC brand.
The Panel finds that the confusing similarity between the Complainant’s trademark and the disputed domain name is being exploited by Respondent who, by using the disputed domain name, is clearly seeking to capitalise on the Complainant’s goodwill in the BANANA REPUBLIC trademark for the purpose of attracting, for commercial gain, third parties to the its website thereby creating a likelihood of confusion with the Complainant’s BANANA REPUBLIC marks as to source or affiliation.
The Panel agrees that when users attempt to visit Respondent’s website at the disputed domain name, consumers mistakenly believe that Respondent’s website is related to Complainant.
In view of the above, and in the absence of any allegation or evidence to the contrary, the Panel finds that Respondent has registered and used the disputed domain name 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 name <bananarepublicfactory.com> be transferred to Complainant Banana Republic (Apparel) LLC.
Date: June 8, 2015