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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banana Republic (ITM) Inc. v. Domain Drop S.A.
Case No. D2007-1336
1. The Parties
The Complainant is Banana Republic (ITM) Inc., United States of America, represented by Cho & Partners, Republic of Korea.
The Respondent is Domain Drop S.A., Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <bananarepublicjeans.com> is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2007. On September 12, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On September 13, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the 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”), 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 October 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2007.
The Center appointed P-E H Petter Rindforth as the sole panelist in this matter on October 29, 2007. 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.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant was established in 1978 and acquired by The Gap Inc. in 1983. The official website of the Complainant can be found under “www.bananarepublic.com”.
On July 11, 2007, the Respondent was contacted on behalf of the Complainant, inquiring the possibility of obtaining the disputed domain name. The Respondent asked for USD 7950, a sum later reduced to USD 3950 (copies of the e-mail correspondence provided as Annex F of the Complaint).
The Respondent registered the disputed domain name on February 23, 2006. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant claims to have trademark registrations for BANANA REPUBLIC in more than 120 countries worldwide (a 53 paged list of those registrations is provided as Annex G of the Complaint), including Hong Kong and various countries in the Caribbean. The earliest registration in the United States dates from July 9, 1985 with a first use date of November 30, 1978.
As of May 2006, the Complainant had more than 430 stores in the United States, Canada and Japan, as well as stores in more than 35 other countries throughout the world. The annual revenue for 2005 was nearly USD 2.3 billion for the BANANA REPUBLIC brand alone. In 2006, the Complainant spent nearly USD 513 million in advertising and marketing (Annexes C, D and I of the Complaint show net sales figures, samples of advertisements and magazine articles). Products sold under the BANANA REPUBLIC trademark include all types of men’s and women’s apparel, including denim jeans.
The disputed domain name incorporates the BANANA REPUBLIC trademark, with the addition of the generic term “jeans”.
The Respondent has no rights or legitimate interests in respect of the domain name, as the Respondent has no trademark rights and is not commonly known by the domain name. There is no relationship between the Complainant and the Respondent.
The disputed domain name is connected to a domain parking website with links to various sites unrelated to the Complainant, offering the sale of jeans and other apparel. The Respondent’s offer to sell the domain name shows that it was registered without any intention of bona fide use.
Finally, the Complainant states that the domain name was registered and is being used in bad faith.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s domain name 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
As stated above, the Complainant claims to have trademark registrations for BANANA REPUBLIC in more than 120 countries worldwide and has provided an extensive list of those registrations. While no documentary evidence such as copies of Certificates of Registration is provided, the Panel has no reason to doubt the Complainant’s assertions that it holds trademark registrations for BANANA REPUBLIC. Further, the sales and advertising figures and samples provided by the Complainant has convinced the Panel that the trademark is well known in many countries around the world.
The relevant part of the domain name for purposes of confusing similarity is “bananarepublicjeans”. This term consists of the Complainant’s trademark with the addition of the generic word “jeans”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. The generic word may even add to the confusing similarity (see Scholastic Inc. v. 366 Publications,
WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”).
In this case, the term “jeans” is directly referring to (some of) the goods sold under the Complainant’s trademark.
Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is apparently not an authorized agent or licensee of the Complainant and has no other permission from the Complainant to apply for any domain name incorporating the trademark BANANA REPUBLIC.
By not submitting a formal Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interest in the domain name.
The Respondent is using the disputed domain name to operate a domain parking website that displays third-party hyperlinks to websites in direct competition with the Complainant. Such use cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy, see TM Acquisition Corp. v. Gary Lam, NAF Case No. FA 280499, holding that the respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the UDRP; see also Chanel, Inc. v. Cologne Zone,
WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights”.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
As pointed out by the Complainant, the Respondent is apparently domiciled in the West Indies but gives a Hong Kong telephone number. The Complainant’s mark is well known and – as accepted by the Panel as a fact – registered in various Caribbean countries as well as in Hong Kong. Given the above facts and circumstances, the Respondent must have been aware of the Complainant’s trademark rights when registering the domain name.
As shown by the e-mail correspondence of Annex F, the Respondent had offered to sell the domain name for an initial sum of USD 7,950, later reduced to USD 3,950, a sum that clearly must be considered to be in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
Even if it may not have been obvious for the Respondent that the inquiry was made on behalf of the Complainant, the Panel concludes that the Respondent has been fully aware of the commercial value of the domain name <bananarepublicjeans.com>. The Panel finds it most likely that the domain name was created, registered and used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s trademark for financial gain.
This Panel concludes that the disputed domain name was both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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, <bananarepublicjeans.com> be transferred to the Complainant.
P-E H Petter Rindforth
Dated: November 12, 2007