WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Gap, Inc. / Gap (Apparel), LLC / Gap (ITM) Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Stephen Bell
Case No. D2018-1897
1. The Parties
Complainants are The Gap, Inc. of San Francisco, California, United States of America (“United States”), Gap (Apparel), LLC of San Francisco, California, United States, and Gap (ITM) Inc. of San Francisco, California, United States, represented by Fross Zelnick Lehrman & Zissu, P.C., United States (hereinafter referred to, jointly and severally, as “Complainant.”).
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Stephen Bell of Berkeley, California, United States (hereinafter referred to as “Respondent.”).
2. The Domain Name and Registrar
The disputed domain name <secure-gap.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2018. On August 21, 2018, 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Complainant filed an amended Complaint on August 24, 2018.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 18, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 2, 2018. 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 leading retailer of clothing accessories, personal care products, and other merchandise. After a humble beginning in San Francisco in 1969, Complainant has become one of the most well-known retailers in the United States. In the most recent fiscal years sales of its GAP branded products totaled over USD 5.3 billion. Complaint, Annex D. Complainant has advertised the GAP trademark in numerous major United States publications. Complainant’s website to which the <gap.com> domain name resolves was visited by almost 225 million U.S. visitors in 2017, and Complainant ships its merchandise to over 90 countries whose residents patronize the <gap.com> website. Complaint, Annex G. Complainant also operates social media pages on Facebook, Twitter, Pinterest, and Instagram, and Complainant posts regularly on You Tube. Complaint, Annex H.
Complainant holds numerous trademark registrations for the mark GAP. In the United States Patent and Trademark Office (“USPTO”), Complainant has registered the mark GAP, in numerous categories, the earliest of which was registered on January 15, 1980, showing a first use in commerce in 1974. Complaint, Annex D. Complainant also has registered its GAP trademark thousands of times in countries around the world. Complaint, Annex E.
On July 29, 2018, two events coincided that could not be said to be happenstance. On that date a coding error in online order confirmation emails sent to GAP customers seeking to learn the current status of their orders mistakenly linked those customers to the then-unregistered disputed domain name <secure-gap.com>, rather than to Complainant’s similar registered domain name, <secure-www.gap.com>. Complainant had registered its domain name on September 13, 1993, and had been using it in its order confirmation process.
Sometime on that day when the coding error first manifested itself, Respondent registered the disputed domain name to which the coding error had caused the customers to be mistakenly linked. Respondent then redirected the Gap customers to a website in which an obscene image was displayed, which had been named the “Tub Girl.” Needless to say, Complainant’s customers were upset, and The Gap immediately began to receive complaints.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to its famous GAP trademark. Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name in that there is no relationship between Complainant and Respondent that would give rise to a license or any other right in respect to Complainant’s famous GAP mark and that the use of the mark demonstrates that it is not being used in connection with a bona fide offering of goods or services. Finally, Complainant alleges that the timing of the registration of the disputed domain name and its redirecting of Complainant’s customers to the obscene image demonstrate that the disputed domain name had been registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s famous GAP trademark together with the English word “secure” and a hyphen following that word and preceding the mark, all followed by the generic Top Level Domain “.com”. The use of a trademark in a domain name, even when accompanied by a word, nonsense, syllable, etc., even when accompanied by a hyphen or other punctuation mark has long been found to be confusingly similar to the trademark that is included in the domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’ famous trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Respondent registered the disputed domain name on the first day that Complainant’s coding problem led to Complainant’s customers being misdirected to the then unregistered domain name. Respondent promptly linked the disputed domain name to a site which featured an obscene image. If this does not constitute bad faith registration and use, the Panel is at a loss for what more is required. Accordingly, the Panel finds that the disputed domain name has been registered and is 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 name <secure-gap.com> be transferred to Complainant.
M. Scott Donahey
Date: October 16, 2018