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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Old Navy (ITM) LLC. v. Henry Yu

Case No. DPH2007-0001

 

1. The Parties

The Complainant is Old Navy (ITM), LLC, San Francisco, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Henry Yu, Philippines.

 

2. The Domain Name and Registrar

The disputed domain name <oldnavy.ph> is registered with DotPH.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2007. On January 26, 2007, the Center transmitted by email to DotPH a request for registrar verification in connection with the domain name at issue. On January 31, 2007, DotPH 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 registrant and the administrative contact. The Center verified that the Complaint satisfied the formal requirements of the PH. Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for PH. 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 February 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2007.

The Center appointed Charnй Le Roux as the sole panelist in this matter on April 2, 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.

 

4. Factual Background

The Complainant is Old Navy (ITM) LLC, a wholly owned subsidiary of Gap, Inc., San Francisco, USA. It asserts rights in the trademark OLD NAVY through worldwide use and registration of the trademark OLD NAVY in relation to a broad range of goods including clothing, accessories, cosmetics and toys and sporting equipment. It also owns the domain name <oldnavy.com>. The OLD NAVY trademark has been used since 1994 and, as of 2006, over a 1000 stores across the United States and Canada have been opened under the name OLD NAVY. Worldwide revenue of close to 7 million US dollars have been generated by the OLD NAVY trademark in 2005. A Philippine trademark application for OLD NAVY was filed in the Philippines for the first time in 1998 for goods and services in international classes 18, 25 and 42. Further applications and a registration followed in 2001 and 2004.

The Disputed Domain Name was registered on September 30, 1999. The Disputed Domain Name is currently owned by the Respondent on record and it is connected to a website which features sponsored links to the websites of the Complainant and its parent company Gap, Inc., as well as the websites of third parties, offering goods in competition with the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of the trademark OLD NAVY through use since approximately 1994 of this trademark, the registration of the domain name <oldnavy.com> and trademark registrations obtained in the United States and the Philippines (where the Respondent resides) and numerous other countries worldwide.

The Complainant contends that the Disputed Domain Name is identical to its OLD NAVY trademark, the only difference being the generic TLD “ph” which was added to the Disputed Domain Name.

The Complainant contends that the Respondent lacks rights or legitimate interest in the Disputed Domain Name in that:

(a) the Disputed Domain Name was registered after the Complainant had been using its OLD NAVY trademark extensively in commerce for 5 years,

(b) the Respondent has never been authorized by the Complainant to use the trademark OLD NAVY in any form,

(c) the Disputed Domain Name suggests that the Complainant is or may be associated with the Respondent or may be authorizing or sponsoring the website associated with the Disputed Domain Name,

(d) the Respondent has never been commonly known by the Disputed Domain Name or has never done business under the Disputed Domain Name,

(e) the Respondent is not making bona fide use of the Disputed Domain Name and is not using it for non-commercial of fair purposes, rather it is using the Disputed Domain Name to generate click through revenue by directing consumers to the Complainant’s official website and to the websites of the Complainant’s direct competitors.

The Complainant, furthermore, contends that the Respondent has registered and is using the Disputed Domain Name in bad faith because the Respondent has adopted the whole of the Complainant’s well-known trademark in the Disputed Domain Name, giving rise to the diversion of potential visitors searching for the Complainant to the website associated with the Disputed Domain Name.

The Complainant also contends that the fact that the Respondent is using the Disputed Domain Name to direct traffic to the Complainant’s official website and to sites of the Complainant’s competitors, based on the confusion caused by the Disputed Domain Name, is evidence of bad faith.

The Complainant indicates that the Respondent is also unduly profiting from the revenue created by the sponsored links that appear on the website at the Disputed Domain Name.

The Complainant, lastly, contends that the failure of the Respondent to provide its mailing address and its e-mail address in the particulars listed in the DotPH directory, further constitutes evidence of its bad faith.

The Complainant requests that the Disputed Domain Name be transferred to it.

B. Respondent

The Respondent did not comply to the Complainant’s contentions.

 

6. Discussion and Findings

(i) Procedural matters

Default of the Respondent.

The Respondent has not reacted to the Complaint but this does not relieve the Complaint of the burden of proof. The Respondent’s failure to deny the Complainant’s allegations and the evidence submitted by the Complainant does, however, in terms of the Rules, permit the Panel to draw appropriate inferences.

(ii) Substantive matters

Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the Disputed Domain Name to be transferred:

a. that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and

b. that the Respondent has no rights or legitimate interest with respect to the Disputed Domain Name and

c. that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is not reflected as the proprietor of all the trademark applications and registrations referred to in its evidence but instead, what appears to be an associated company and its parent company, being Old Navy (ITM) Inc and Gap, Inc. The Panel does, however, find on that basis that the Complainant does own some of the registrations and/or applications in the USA and the domain name <oldnavy.com>, that the Complainant has proven that it owns rights in the trademark OLD NAVY.

The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark OLD NAVY. Apart from the TLD “ph” in the Disputed Domain Name, it wholly incorporates the Complainant’s trademark.

B. Rights or Legitimate Interests

The panel in Do The Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624 summarised the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interest in a domain name.

The Complainant in this matter has made the required prima face case to which the Respondent has not reacted. By failing to file a response, the Respondent has failed to demonstrate rights or legitimate interest in the Disputed Domain Name. See Time Out Group Limited v. Mark Jacobson, WIPO Case No. D2001-0317.

Furthermore, on the record presented in this matter, the Respondent registered the Disputed Domain Name after extensive use of the OLD NAVY mark had already been made in commerce. Particular reference is made to the substantial press generated in the US shortly after the launch of the trademark in 1994. An application for the OLD NAVY trademark had also by that time been filed in the Philippines. The Panel finds it inconceivable that the Respondent was unaware of the Complainant’s trademark when it registered the Disputed Domain Name.

The Panel finds that Internet users would in all likelihood be attracted to the website linked to the Disputed Domain Name by the OLD NAVY trademark and that they would be likely to access the website because of interest in the Complainant’s goods.

The Panel also concurs with the Complainant’s assertion that the Respondent’s choice of the Disputed Domain Name demonstrates an intention to derive a benefit from the goodwill attached to the Complainant’s trademark, particularly since the Respondent also appears to use the Disputed Domain Name to promote the sale of goods in competition with the Complainant.

The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The Complainant relies on Paragraph 4(b)(iv) of the Policy, which provides that bad faith may be evidenced by use by the respondent of the domain name with the intention to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating the likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Panel finds that on the record presented, a case has been made out in terms of paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent is intentionally attempting to divert Internet users to its website by exploiting the confusing similarity between the Disputed Domain Name and the Complainant’s OLD NAVY trademark and that the Respondent is in all likelihood engaging in such conduct in order to reap a commercial benefit.

 

7. Decision

The Panel orders that the Disputed Domain Name, <oldnavy.ph>, be transferred to the Complainant.

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Charnй Le Roux
Sole Panelist

Dated: April 16, 2007