WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Gap, Inc., Gap (Apparel), LLC, Gap (ITM) Inc. v. Domain Whois Privacy Service / Carole Posey
Case No. D2018-1967
1. The Parties
Complainants are The Gap, Inc., Gap (Apparel), LLC, and Gap (ITM) Inc. of San Francisco, California, United States of America (“United States” or “US”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Domain Whois Privacy Service of Nobby Beach, Australia / Carole Posey of Elmhurst, Alabama, United States.
2. The Domain Name and Registrar
The disputed domain name <thegapcafebar.com> is registered with Web Werks India Pvt. Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2018, the Center received by email the Registrar’s 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 1, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 6, 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
Complainants are affiliated companies with ownership of trademark registrations for the word trademark GAP, and word and design marks incorporating the term GAP, on the Principal Register of the United States Patent and Trademark Office (“USPTO”). These affiliated companies are hereinafter referred to as “Complainant”. Complainant’s registrations at the USPTO include word trademark registration number 1,129,294, registration dated January 15, 1980, in international class (IC) 25, covering clothing, as further specified; word and design trademark registration number 1,745,875, registration dated January 12, 1993, in ICs 25 and 42, covering clothing and retail clothing store services, and; word and design service mark registration number 2,719,435, registration dated May 27, 2003, in IC 35, covering Internet retail services in the field of clothing, as further specified. Complainant has submitted evidence of numerous trademark registrations in countries other than the United States for the word, and word and design, GAP trademark.
Complainant is a major clothing retailer based in the United States, with operations worldwide, having total sales under the GAP trademark of over USD 5 billion in 2017. Complainant has spent hundreds of millions of dollars advertising under the GAP trademark. Complainant maintains a substantial commercial Internet presence, inter alia, at “www.gap.com”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration for the disputed domain name was created on August 4, 2017.
The disputed domain name has been used to direct Internet users to a website headed with the term “Ecco” and offering for sale Ecco brand shoes. Complainant has provided evidence that the prices at which Ecco brand shoes were offered on Respondent’s website are substantially below contemporaneous pricing for the same shoes on websites of competing retailers. Other than the disputed domain name itself, there was no reference on Respondent’s website to Complainant or the GAP trademark, whether as disclaimer of affiliation or otherwise.
Complainant has provided evidence that the individual named Respondent’s record of registration lists a physical address in a city/town that does not exist in Alabama, United States.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute resolution under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts rights in the GAP trademark based on use in commerce in the United States and throughout the world, and registrations in the United States and throughout the world. Complainant states that the GAP trademark has been recognized as famous by both US federal courts and the Trademark Trial & Appeal Board of the USPTO.
Complainant contends that the disputed domain name is confusingly similar to the GAP trademark because the disputed domain name incorporates its trademark in its entirety, and the addition of generic terms “the”, “cafe” and “bar” do not eliminate confusion.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant and Respondent have no relationship that would expressly or implicitly authorize Respondent to make use Complainant’s trademark in the disputed domain name; (2) there is no indication that Respondent has ever been known by the disputed domain name; (3) Respondent has not made bona fide use of Complainant’s mark in the disputed domain name through sale of third-party branded products, even assuming (which Complainant does not) that the products offered for sale are not counterfeit, and; (4) Respondent’s website trades on the fame of Complainant’s mark, which cannot constitute bona fide use.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent’s lack of connection to Complainant or to any legitimate use of the disputed domain name is evidence of bad faith, and; (2) Respondent is earning revenue from the disputed domain name by drawing consumers to its website by unauthorized use of Complainant’s trademark in the disputed domain name.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to Complainant “The Gap, Inc.”.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint and annexes to Respondent at email, and the Written Notice of the complaint at fax and physical addresses provided in its record of registration. Courier records suggest successful delivery of the Written Notice of the Complaint to the address of the privacy service listed in Respondent’s record of registration, but not to the individual named Respondent. Fax transmission to the individual named respondent was not successful. There is no indication in the record of this proceeding of difficulties in transmitting email to the addresses provided by Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the GAP trademark based on use in commerce in the United States and elsewhere, and registration at the USPTO and elsewhere. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights in the GAP trademark. The Panel determines that Complainant has established rights in the GAP trademark.
The disputed domain name incorporates the GAP trademark in its entirety, adding the definite article “the” as a prefix, and the nouns “cafe” and “bar” combined as a suffix. In the United States and elsewhere, retail stores incorporate various types of food service within their premises. Internet users viewing the disputed domain name are likely to assume that Complainant’s trademark is being used by Complainant to denote retail locations that include such food service. The Panel determines that the disputed domain name is confusingly similar to Complainant’s GAP trademark.
Complainant has established that it owns rights in the trademark GAP, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent has used the disputed domain name without authorization by Complainant to direct Internet users to a commercial website offering third-party branded products for sale. Use of Complainant’s trademark to promote third-party products without Complainant’s authorization does not constitute fair use of Complainant’s trademark in the disputed domain name, and it does not constitute a bona fide use of Complainant’s trademark.
In addition, Complainant has made a prima facie showing that the products being offered on Respondent’s website are not genuine, and Respondent has not rebutted or attempted to rebut that prima facie showing. The use of Complainant’s trademark in connection with offering counterfeit products for sale does not establish rights or legitimate interests in favor of Respondent.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” These include: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Respondent has registered the disputed domain name confusingly similar to Complainant’s well-known trademark and used it to divert Internet users to a website offering third-party branded products for sale. There is reason to believe that the products being offered on Respondent’s website are not genuine. Respondent has used the disputed domain name intentionally for commercial gain to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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, <thegapcafebar.com>, be transferred to Complainant “The Gap, Inc.”.
Frederick M. Abbott
Date: November 19, 2018