WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Gap, Inc., Gap (Apparel), LLC, Gap (ITM) Inc. v. Domains By Proxy, LLC / Anthony Banks / Trey Connally
Case No. D2020-3469
1. The Parties
Complainants are The Gap, Inc., United States of America (“United States”), Gap (Apparel), LLC, United States, and Gap (ITM) Inc., United States (collectively, “Complainant”), represented by Fross Zelnick Lehrman & Zissu, P.C., United States.
Respondent is Domains By Proxy, LLC, Unites States / Anthony Banks, United States / Trey Connally, United States.
2. The Domain Names and Registrar
The disputed domain names <gapyeezy.com> and <gapyzy.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2020. On December 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 4, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 4, 2021.
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 March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on April 8, 2021. 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.
In an email on April 19, 2021, the Center received a submission from “Anthony Banks” at an email address associated with Respondent (“Mr. Banks”) in the WhoIs details revealed by the involved Registrar for the domain name <gapyeezy.com> after the Complainant was filed. The email from Mr. Banks incorporated the following statements:
“To Whom it may concern,
The domain name in question gapyeezy.com is being held for Kanye West. Since Mr. West owns yeezy he has the same rights to own this domain name as Gap. Removing this domain name from the listed register who acquired and bought it fairly would be a violation since this domain name is not being used to solicit business. Please let me know how to proceed.
On that same day the Center received a further submission from Complainant in response to the Respondent email. Complainant’s email incorporated the following statements:
“On behalf of the Complainants, we are compelled to respond to Mr. Banks’ last minute submission. The deadline for Mr. Banks to submit an answer in this dispute was March 30, 2021. Before today, Mr. Banks had not responded to any communications in this dispute since January 26, 2021 (Ex. P. to the Amended Complaint).
In our prior telephone conversations with Complainants’ counsel, Mr. Banks never mentioned that he had registered the gapyeezy.com domain name on Mr. West’s behalf or that he was authorized by Mr. West to do so. Similarly, in email communications with Mr. Banks, he never mentioned that he registered the gapyeezy.com domain name on Mr. West’s behalf, that he was authorized by Mr. West to do so, or that he was holding the gapyeezy.com domain name for Mr. West. See Am. Compl. at Paragraph 31. The full history of emails between Complainant’s counsel and Respondent Banks are attached hereto (and included in the Am. Compl. at Exhibit Q). Those emails include no reference to the claims made by Mr. Banks in his email of April 19, 2021 that he registered or is holding the gapyeezy.com domain name on behalf of Mr. West. Indeed, he provides no proof that he was authorized by Mr. West or any company with rights in the YEEZY trademark to register the domain name on their behalf or that anyone associated with Mr. West is aware that the domain name is being held on their behalf.
Accordingly, Complainants ask that Mr. Banks’ email of April 19, 2021 be disregarded by the panel and that the panel order that the gapyeezy.com domain name be transferred to Complainants. Thank you,
Todd Martin | email@example.com
Fross Zelnick | 212.813.8219”
The admissibility of the unsolicited supplemental filings is addressed below.
4. Factual Background
The following facts appear from the Complaint and its Annexes (which have not been contested by Respondent).
Complainants The Gap, Inc. and its subsidiaries Gap (Apparel), LLC and Gap (ITM) Inc. (consolidated for purposes of this proceeding and hereafter collectively referred to as “Complainant”), comprise one of the world’s leading retailers of clothing, accessories, personal care products, and other merchandise sold under the GAP trademark (the “GAP Mark”). Since 1969 consumers have come to Complainant’s GAP stores and subsequently accessed its merchandise through its “www.gap.com” website (“GAP Website”), Complainant states that its 1,700 company-operated and franchise retail locations in 70 countries have become a top destination around the world for wardrobe essentials as well as a cultural icon, generating total sales over $5.1 billion in Complainant’s most recent fiscal year. Complainant’s decades of extensive advertising and promotional efforts, as well as the amount, volume, and geographic extent of sales made under the GAP Mark has provided sufficient widespread recognition for the GAP Mark to be considered famous.
On June 26, 2020, Complainant announced the launch of a new line in collaboration with Kanye West and his YEEZY brand called "Yeezy Gap" (the “Collaboration Mark”). The press release also announced the collaboration would include a new logo using a font style and color scheme similar to the GAP Mark logo but substituting its literal component letters “GAP” on Gap's famous logo with “YZY”, an abbreviation of the YEEZY brand (the “Collaboration Logo”).
Complainant has secured ownership of numerous trademark registrations for the GAP Mark in the U.S as well as thousands of trademark registrations in most jurisdictions around the world for clothing-related goods and services, including but not limited to, the following:
United States Trademark Registration No. 1,129,294, GAP, registered January 15, 1980 for a range of clothing items including pants, jeans, skirts, vests, jackets, overalls, jumpers, dresses, sweaters, t-shirts, belts, hats, shorts, and halter tops in International Class 25; and based on a claim of first use in 1974.
United States Trademark Registration No.1,745,875, GAP, registered January 12, 1993 for a range of clothing items, including shirts, pants, shorts, vests, jackets, dresses, skirts, sweaters, swimsuits, headbands, belts, hats, scarves, gloves, socks, hosiery and shoes in International Class 25, and retail clothing store services in International Class 35; and based on a claim of first use in 1988.
United States Trademark Registration No.2,719,435, GAP, registered May 27, 2003 for "Internet retail services in the field of clothing, clothing accessories, personal care products, home products, luggage and bags, souvenir items and gift sets; providing gift, product and service information to customers, and retail clothing store services in International Class 35; and based on a claim of first use in 1997.
Website analytics submitted in the record show that the GAP Website was visited by almost 260 million U.S. visitors in 2018. Complainant also operates several international websites, including “www.gap.eu”, “www.gap.co.uk”, “www.gap.cn”, “www.gapcanada.ca” and “www.gap.co.jp”, and has millions of followers on various social media platforms.
The disputed domain names were both registered on June 26, 2020 and since that date, each disputed domain name has been used to redirect Internet users to a to a parking page with click-through links which redirects to other websites with commercial links relating to a variety of goods and services.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the disputed domain names, namely, that each disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of each disputed domain name; and that each disputed domain name was registered and is being used in bad faith.
Respondent did not file a timely Response in reply to Complainant’s contentions.
6. Discussion and Findings
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a Response.
Where no Response is filed, the Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. Namely, for each disputed domain name Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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.
However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate".
The Panel will address each of these requirements in turn. However, before doing so, it first needs to address the procedural point, whether this single proceeding can continue in respect of both disputed domain names, notwithstanding the fact that WhoIs details for the disputed domain names appear to show two different "registrants". See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview 3.0 , section 4.2 .
A. Procedural Matters: Multiple Respondents and Unsolicited Additional Submissions
Section 4.11.2 of the WIIPO Overview 3.0 addresses the issue of whether one proceeding can be brought against multiple respondents. It suggests that where a complaint is brought against more than one "respondent", the question is whether:
"(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties."
Section 4.11.2 goes on to state that prior UDRP Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, including similarities in . . . (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names . . . (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s) . . . or (xi) other arguments made by the complainant and/or disclosures by the respondent(s). WIIPO Overview 3.0, Section 4.11.2; see also, Apple Inc. v. Stanley Pace (a.k.a. Jordan Smith, Chris Carter, sunhei.org, Keith Besterson, Shahamat, Staci Michele and Courtney Culbertson) and Fundacion Private Whois, WIPO Case No. D2013-1313 (where complaint shows a number of domain names, prima facie registered in different names, are in fact under common control, panel can proceed to single decision on those domain names).
Complainant has submitted evidence in the record sufficient for the Panel to find that the registrants of the two disputed domain names, <gapyeezy.com> and <gapyzy.com> are either the same person or individual or are under common ownership or control because: 1) both disputed domain names were registered with the same registrar; 2) both were registered on the same day, August 26, 2020, showing more likely than not the registration of both domain names was controlled by the same party; 3) both resolve to the same parked page website with PPC links; and, 4) both use the same name servers.
These technical and content factors supporting common ownership bolster the evidence already visible in the derivative relationship of the domain names themselves incorporating Complainant’s GAP Mark. The first August 26, 2020 disputed domain name appends the full YEEZY brand name to Complainant’s GAP Mark to produce an inverted form of the Collaboration Mark publicly announced in the press two months earlier on June 26, 2020. The second August 26, 2020 disputed domain name appends to the GAP Mark the abbreviation derived from the YEEZY brand name, “YZY”, as embodied in the Collaboration Logo published in the same June 26, 2020 public announcement. The Panel further notes that the Complainant's claims respecting each of the disputed domain names involve common questions of law and fact. Based on the corresponding common features noted above, there appears prima facie to be one single respondent.
In light of such considerations, the Panel finds that consolidation of the multiple domain name disputes involving the multiple Respondents listed on the first page of this Decision pursuant to paragraph 10(e) of the Rules would be procedurally efficient. Consolidation will permit multiple domain name disputes arising from a common nucleus of facts and involving common legal issues to be heard and resolved in a single administrative proceeding. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, and generally furthers the fundamental objectives of the Policy. The Panel also finds that this is fair to both Parties, as the Respondents (if indeed there is more than one respondent) have been given the opportunity to object but have chosen not to respond. See, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
Consideration of the Parties’ Unsolicited Supplemental Filings
The Panel has also reviewed the Parties’ respective supplemental filings in this proceeding, along with the admissibility of such unsolicited additional filings in this proceeding. As for the email submission received from Respondent after the deadline for a Response had passed, and Complainant’s reply to it, Rule 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules, however, for a party to file an additional submission without leave of the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so. See, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner WIPO Case No. D2001-1447.
Under the Rules, each Party is entitled as of right to submit only one single pleading. Paragraphs 10 and 12 of the Rules grant the Panel discretion to determine the admissibility of supplemental filings, including further statements or documents.
The Panel is of the view that while late, Respondent’s filing addresses points relevant to the disposition of this case, and that Complainant’s supplemental pleading consists of a response to Respondent’s late pleading.
Disregarding for a moment the lateness of Respondent’s submission, the Panel notes that the content thereof raises exceptional circumstances, new developments, arguments or evidence that were not available to Complainant at the time of filing its Complaint (as is made clear from Complainant’s reaction set out above). The Panel also notes that these two submissions thereby raise competing versions of the facts and are in that respect germane to the credibility of Respondent’s claim. Noting that the panel would be fully within its discretion to disregard both submissions, since they arrived before the decision date they are exceptionally taken into account.
B. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for its GAP Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
Complainant contends that the disputed domain names are confusingly similar to its GAP Mark in which Complainant has rights because each disputed domain name contains the GAP Mark in its entirety and attaches the terms “yeezy” or “yzy” referring to Complainant's collaboration with Kanye West's YEEZY brand, and the generic “.com” gTLD. The first disputed domain name <gapyeezy.com> appends to the GAP Mark the term “yeezy”, thereby incorporating in its entirety the inverted form of the Collaboration Mark described in Complainant’s June 26, 2020 announcement of its collaboration with Kanye West, along with a generic Top-Level Domain (“gTLD”).
In like manner, the second disputed domain name <gapyzy.com> appends to the GAP Mark the literal element “yzy” from the Collaboration Logo in Complainant’s June 26, 2020 announcement along with the gTLD “.com”. In either case the addition of the “yeezy” and “yzy” terms to Complainant's GAP Mark does not eliminate the visual impression that each disputed domain name is associated with Complainant’s trademark. Given the announced collaboration, the combination of the two marks in each disputed domain name would convey to Internet users familiar with Complainant’s advertising an expected association thereby triggering confusion. See, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793; see also Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Holding N.V., WIPO Case No. D2005-1342 (inverted order of complainant’s trademark terms in domain names at issue does not render them dissimilar to mark).
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The addition of the Top-Level domain (“TLD”) “.com” is irrelevant in determining whether the disputed domain name is confusingly similar. See, Research in Motion Limited v. thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146; WIPO Overview 3.0, section 1.11.
The disputed domain names here incorporate the entirety of Complainant’s GAP Mark which remains readily recognizable as the leading term within each disputed domain name, with additional terms that render them identical to the inverted form of the Collaboration Mark and to the literal element of the Collaboration Logo and, which is sufficient for this Panel to find the disputed domain names confusingly similar to Complainant’s GAP Mark.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under this second element of the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393.
Prior UDRP panels have also held where a complainant's adoption and extensive use of its trademark predates a respondent's registration of the disputed domain name, as Complainant’s extensive use of its GAP Mark has here, the burden shifts to Respondent to establish its rights or legitimate interests in the disputed domain names. See PepsiCo, Inc. v. Amilcar Perez Lista dibia Cybersor, WIPO Case No. D2003-0174. Respondent here has failed to present any evidence of its rights or legitimate interests in the disputed domain names, and such failure is tantamount to admitting the truth of Complainant’s assertions. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain names. First, Complainant asserts Complainant and Respondent have no apparent relationship that would give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating the GAP Mark, nor has Complainant consented to or granted any authorization for Respondent to make use of Complainant’s GAP Mark in a domain name or otherwise.
Complainant also shows Respondent is not commonly known by either disputed domain name because Respondent is listed in the WhoIs record submitted with the Complaint for both disputed domain names as Domains By Proxy, LLC, and the Registrar disclosed the registrant’s information for <gapyeezy> as Anthony Banks and for <gapyzy> as Trey Connally, neither of which registrant names bear any resemblance to either disputed domain name whatsoever. The Panel finds in review of the WhoIs record and other evidence submitted by Complainant that Respondent is not commonly known by either of the disputed domain names. See Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610.
Complainant also states that to the best of its knowledge, Respondent has no genuine actual or legitimate business which uses the name or mark GAP or YEEZY, or any similar name and has not used the GAP or YEEZY name or mark (or any similar name) in connection with the bona fide offering of goods or services (including In its reply to the late Response) such that it benefits from any goodwill in that as such terms are reflected in the disputed domain name.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Furthermore, prior UDRP panels have held that domain names that consist of a complainant’s trademark plus an additional term may carry a risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0 , section 2.5.1 . In this case, the Panel finds that because the terms added combine to form the inverted form of the Collaboration Mark and the literal element of the Collaboration Logo respectively, each disputed domain name carries a risk of implied affiliation.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not submitted argument or evidence sufficient to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain names and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent has registered the disputed domain names in bad faith for at least the following reasons.
Complainant contends that Respondent registered the disputed domain names in full knowledge of Complainant’s rights because Complainant has exclusive and prior rights in the GAP Mark, which precede Respondent’s registration of the disputed domain names by decades. To support this assertion Complainant has provided evidence sufficient to establish that its rights in the GAP Mark were established as early as 1969, decades prior to Respondent’s registration of the disputed domain names on August 26, 2020. The Panel also notes the media coverage materials submitted by Complainant demonstrate the worldwide fame of the GAP Mark and the merchandise it identifies.
Complainant’s famous GAP Mark is recognized and registered around the world including the United States, where Respondent is located, and has been used to identify clothing and related merchandise provided to millions of consumers for decades. It is implausible, therefore, to believe that Respondent was not aware of that mark when it registered the confusingly similar disputed domain names incorporating not only the GAP Mark but also the marks created through Complainant’s announced collaboration with Kanye West as assessed in section 6.A. above. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4. See also, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Société des Produits Nestlé SA v. Kayvan Sadeghi, WIPO Case No. DIR2007-0002.
The Panel finds that given the decades of use by Complainant of its GAP Mark prior to Respondent’s registration of the disputed domain names, the worldwide fame of the GAP Mark, and that each of Respondent’s disputed domain names incorporates the GAP Mark in its entirety and combines it with terms taken from the Collaboration Mark and Collaboration Logo, respectively, Respondent registered the disputed domain names in bad faith with actual knowledge of Complainant’s GAP Mark and the announced collaboration. See Embratel v. McCarthy, WIPO Case No. D2000-0164; see also WIPO Overview 3.0, section 3.2.2.
The Panel also finds that Respondent’s use of the disputed domain names is in bad faith. Respondent’s website landing page for each disputed domain name is a parked landing page with click through links which the Panel infers provide pay-per-click revenues for Respondent’s commercial gain.
The Panel finds Respondent has registered and used the disputed domain names in bad faith because given the degree of distinctiveness and world-wide notoriety of Complainant’s GAP Mark, Respondent’s registration of domain names incorporating not only the GAP Mark but also the marks created through Complainant’s announced collaboration with Kanye West only a short time after the announcement, failure of Respondent to submit a timely formal response, and Respondent’s use of the disputed domain names intentionally to attract, for commercial gain, Internet users to its online pay per click pages, creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, a form of bad faith contemplated by paragraph 4(b)(iv) of the Policy. See WIPO Overview 3.0, section 3.1.4.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 names <gapyeezy.com> and <gapyzy.com> be transferred to Complainant The Gap, Inc.
Scott R. Austin
Date: April 27, 2021