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and Mediation Center
Gap (Apparel), LLC v. Michele Dinoia aka SZK.com
Case No. D2006-0545
1. The Parties
The Complainant is Gap (Apparel), LLC, San Francisco, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Michele Dinoia aka SZK.com, of Pineto, Italy.
2. The Domain Name and Registrar
The disputed domain name <shopgap.com>is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2006. On May 2, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On May 2, 2006, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on May 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2006.
The Center appointed Daniel
J. Gervais as the sole panelist in this matter on June 1, 2006. 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’s basis for its complaint is its use, registration, and ownership of the world-famous name and mark GAP in connection with its retail clothing business, as well as its use, registration and ownership of several domain names incorporating the mark GAP, including but not limited to <gap.com>, <gapkids.com> and <babygap.com>.
The Complainant owns over 120 US trademark registrations in the United States
for the GAP mark and marks containing the word GAP. The Complainant has used
the GAP mark in connection with its retail stores since 1969, and began using
the GAP trademark on its private label clothing in 1974. The Complainant has
since used its GAP Marks continuously and extensively for over three decades
on a wide variety of goods, including, without limitation, men’s, women’s,
children’s and infants’ clothing; fashion accessories; fragrance
and cosmetic products; as well as on store signs and in advertising. The Complainant
currently operates over 1,645 retail stores under its GAP Marks worldwide, and
has sold apparel and other products bearing the GAP Marks in approximately 37
countries throughout the world.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to Complainant’s GAP Marks, since its dominant and most distinctive element is Complainant’s very name and trademark GAP, and the remainder of the Domain Name consists solely of the descriptive term “shop” and the descriptive suffix “.com.” The Domain Name was registered in 2003, long after Complainant had established rights in its GAP Marks and long after the marks had become famous. Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s famous GAP mark. Certainly, the Domain Name is not, nor could it be contended to be, a nickname of the Respondent or in any other way identified with or related to a legitimate name belonging to Respondent.
The Respondent is a notorious cybersquatter with numerous decisions rendered against him by the WIPO UDRP panels. The Respondent currently is the registered owner of over 5,000 domain names, many of which incorporate other famous trademarks or misspellings thereof.
The Domain Name resolves to a portal that explicitly references the Complainant and links to, among other web sites, the online retail stores of competitors of the Complainant. The Respondent’s registration and maintenance of a domain name that wholly incorporates Complainant’s famous name and trademark GAP in order to divert Internet users seeking Complainant’s online store to Respondent’s web site establishes that the Respondent registered and continues to use the Domain Name in bad faith.
Given the Complainant’s fame and the Respondent’s well-established notoriety as a cybersquatter and the fact that the Respondent expressly references the Complainant on the web site linked to the Domain Name, there can be no question that the Domain Name is intended to and does refer to the Complainant’s GAP Marks, and was registered and is being used by Respondent for the purpose of diverting Internet users who are seeking Complainant’s clothing products to Respondent’s web site. Clearly, the Respondent could only have registered the Domain Name in order to unlawfully profit from the Complainant’s hard-earned and valuable goodwill in its GAP Marks.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.B.1);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B.2); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.B.3.).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
On the first question, the Complainant has established rights in the GAP trademark.
On the second question, the domain name, which incorporates a trademark which is used both for “brick-and-mortar” and online commerce, and the word “shop” which would precisely suggest an e-commerce capability to buy the Complainant’s products is confusingly similar to the Complainant’s mark.
The Panel finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on the Complainant’s prior use of the GAP mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests in using the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. Quite contrary, the evidence suggests that the Respondent is using the disputed domain name for commercial gain, and that such use of the domain name may tarnish the Complainant’s mark.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site 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 Respondent’s web site or location or of a product.
The Panel did not draw conclusions from previous decisions involving the Respondent or its alleged notoriety as a cyber-squatter. However, there is ample evidence of the situation described in paragraph 4(b)(iv).
Apart from the famous nature of the Complainant’s marks, the domain name is confusingly similar to the Complainant’s mark GAP. It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered the identical domain name, especially given the reference to the Complainant on the web page to which the domain name resolves.
A number of decisions under the Policy stand for the
proposition that in respect of famous marks, which have a higher level of protection
in international intellectual property agreements (see e.g., Article 16(2) and
(3) of the TRIPS Agreement), the person who registers a confusingly similar
domain name should be willing to show an intention to express himself or herself
by responding to communications and/or indicating a good faith use of the domain
name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO
Case No. D2000-1273; Advanced Micro Devices, Inc. v.
[No Name], WIPO Case No. D2000-0515;
Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003; Encyclopedia Britannica, Inc. v. John Zuccarini
and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO
Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO
Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel
Casino Limited v. Antonios Manessis (trading as .com and manessis.com),
WIPO Case No. D2001-1461. It is difficult
to conceive that the Respondent chose to register the domain name by accident.
In fact, based on the facts submitted, it is difficult to conceive of any plausible
actual or contemplated active use of the domain name by the Respondent that
would not be infringing to the Complainant’s marks.
The Panel finds for the Complainant on this third
element of the test.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <shopgap.com> be transferred to the Complainant.
Daniel J. Gervais
Dated: June 8, 2006