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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Gap, Inc. v Domain, Administration, Moniker Privacy Services Registrant [1726026]: Domain Names, Administration St Kitts Registry

Case No. D2009-0122

1. The Parties

The Complainant is The Gap, Inc., San Francisco, California, United States of America, represented by Cooley Godward Kronish LLP, United States of America.

The Respondents are Domain, Administration, Moniker Privacy Services, United States of America/ Registrant [1726026]: Domain Names, Administration St Kitts Registry, Olam, St. Kitts and Nevis (collectively, the "Respondent").

2. The Domain Name and Registrar

The disputed domain name <bananarepbulic.com> (the "Domain Name") is registered with Moniker Online Services LLC (the "Registrar").

3. Procedural history

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2009. On February 2, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On February 3, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 13, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent`s default on March 18, 2009.

The Center appointed Ms. Gabriela Kennedy as the sole panelist in this matter on March 26, 2009. 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

Banana Republic was established in 1978 and initially sold military surplus clothing in California. The Complainant acquired Banana Republic in 1983 and since then has developed and marketed the BANANA REPUBLIC brand primarily in respect of retail clothing both in the United States and internationally. The Complainant currently operates over 500 stores under the BANANA REPUBLIC brand across the United States, Canada, Japan and the United Kingdom. Banana Republic franchise stores have, in the past 3 years, been opened in a number of countries including Bahrain, Oman, Singapore, Republic of Korea and United Arab Emirates.

In 2007, net sales for the BANANA REPUBLIC brand in North America were over US$2.6 billion; in the first half of 2008 net sales were nearly US$1.2 billion. In 2008 the Complainant spent almost US$496 million in promoting its brands, including the BANANA REPUBLIC brand.

In this year`s Interbrand Design Forum survey of "The Most Valuable U.S. Retail Brands", the BANANA REPUBLIC brand was ranked at number 30 and estimated to have a value of more than US$1.545 billion.

The BANANA REPUBLIC brand has also received considerable attention in the media, including print, radio and television, in the United States and internationally

The Complainant first obtained formal trade mark protection for the BANANA REPUBLIC brand in the United States in 1985 and presently, through its wholly- owned subsidiaries, owns registrations for the BANANA REPUBLIC word mark and other marks incorporating the words "Banana Republic" in more than 120 countries. The Complainant also registered the <bananarepublic.com> domain name in 1995 and has used this domain name continuously since this time to operate its main website.

5. Parties` Contentions

A. The Complainant`s contentions

The Complainant`s contentions can be summarised as follows:

(a) the main part of the Domain Name, i.e."bananarepbulic", is identical to the Complainant`s BANANA REPUBLIC trade mark but for the transposition of the letter "P" for "B" in "public" and this is a foreseeable mistyping of the BANANA REPUBLIC trade mark and the <bananarepublic.com> domain name;

(b) by adopting a domain name (i.e. the Domain Name) which is substantially identical to and which conveys the same overall visual impression as the Complainant`s BANANA REPUBLIC trade mark, the Respondent has attempted to capitalise on the goodwill and reputation of the BANANA REPUBLIC mark;

(c) the Respondent registered the Domain Name long after the Complainant had well established its rights in the BANANA REPUBLIC trade mark and, given the fame of the mark both in the United States and internationally, the Respondent could not possibly have been unaware of the mark and of the Complainant`s rights in it at the time of registering the Domain Name;

(d) to the best of the Complainant`s knowledge, the Respondent does not hold any trade mark registrations that are identical, similar or in any way related to the BANANA REPUBLIC trade mark;

(e) the Respondent is not an authorised dealer, distributor or licensee of the Complainant;

(f) there is no objective reason for the Respondent to have selected the Domain Name other than to create an association with the BANANA REPUBLIC trade mark;

(g) the act of misspelling or making a typographical error to a mark does not create a new or different mark in which the Respondent can be said to have rights or legitimate interests;

(h) the Respondents` use of the Domain Name in connection with click-through and pop-under advertisements pointing to other websites (including those of the Complainant`s competitors) misleadingly diverts customers from the Complainant`s website and tarnishes the BANANA REPUBLIC trade mark;

(i) the Respondent employed the use of a WHOIS privacy shield to prevent the Complainant from identifying the Respondent as the registrant of the Domain Name;

(j) the Respondent has been named as respondent in at least eight other domain name administrative complaint proceedings all of which resulted in the transfer or cancellation of the respective domain names in dispute; and

(k) the Respondent failed to respond to the Complainant`s efforts to resolve the matter informally.

B. The Respondent`s contentions

The Respondent did not file a Response and has not provided any evidence to counter the Complainant`s contentions.

It is open for the Panel to infer, from the Respondent`s failure to file a Response that the Respondent does not dispute the Complainant`s contentions and otherwise to make such inferences from this as the Panel may see fit.

6. Discussion and findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.

Further, paragraph 14(b) of the Rules provides that where a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel may draw inferences from the Respondent`s failure to submit a Response in accordance with paragraph 5(a) of the Rules as it considers appropriate.

A. Identical or confusingly similar

The Complainant, through its wholly-owned subsidiaries, is the registered owner of the BANANA REPUBLIC word mark and other marks incorporating the words "Banana Republic" in over 120 countries and the Complainant uses (or licenses the use of) the BANANA REPUBLIC trade marks in connection with the operation of more than 500 stores worldwide, including on its product labels, stores, shopping bags and advertising.

The Panel accepts, based on the evidence provided by the Complainant (including the number of Banana Republic stores currently in operation, the reported sales revenue generated by the BANANA REPUBLIC brand in 2007 and the first half of 2008, the recognition by the Interbrand Design Forum survey of BANANA REPUBLIC as one of the most valuable brands in the United States and the media attention that the BANANA REPUBLIC brand has attracted), that the Complainant has acquired a significant reputation and level of goodwill in the BANANA REPUBLIC trade marks both in the United States and internationally.

The Panel accepts that the difference between the main component of the Domain Name "bananarepbulic" and the Complainant`s "BANANA REPUBLIC" trade mark, namely the transposition of the letter "P" for "B", is immaterial to and does not serve either to distinguish the Domain Name from the Complainant`s BANANA REPUBLIC trade mark and <bananarepublic.com> domain name, or to dispel the potential for confusion between them. Conversely, the Panel accepts that the Domain Name is a foreseeable mistyping of the Complainant`s BANANA REPUBLIC trade mark and <bananarepublic.com> domain name. It is well-established that domain names incorporating a slightly misspelled version of a trade mark may be held to be confusingly similar to such trade mark. See, for example, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 and Swarovski A.G v. Modern Empire Internet Ltd, WIPO Case No. D2006-0148.

The Panel accordingly finds that the Domain Name is confusingly similar to the Complainant`s BANANA REPUBLIC trade mark and that the first element of the Policy has been established.

B. Rights or legitimate interests

The Complainant relies on the following points to make out a prima facie case that the Respondent lacks any rights or legitimate interests in respect of the Domain Name:

(a) The Domain Name was registered in 2005 more than 20 years after the Complainant acquired and obtained trade mark protection for the BANANA REPUBLIC.

(b) The Respondent is not a licensee of the Complainant, and to the Complainant`s knowledge and belief, the Respondent does not hold any trade mark registrations that are identical, similar or in any way related to the BANANA REPUBLIC marks.

(c) The only use that the Respondent has made of the Domain Name is in connection with click-through and pop-under advertisements pointing to other websites, including websites offering the Complainant`s products as well as products which compete with those of the Complainant.

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the subject domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the absence of any evidence submitted by the Respondent to demonstrate:

(a) that the Respondent owns any trade or service marks corresponding to the Domain Name; or

(b) that the Respondent has been commonly known by the Domain Name,

the only basis available to the Panel by which to assess the Respondent`s rights or legitimate interests in the Domain Name (or lack thereof) is the Respondent`s use of the Domain Name. The use of a domain name for the purpose of collecting referral fees from sponsored advertising has been consistently held not to be a legitimate offering of goods or services. See for example PRL USA Holdings, Inc v LucasCobb, WIPO Case No. D2006-0162. The Panel accepts, based on the evidence submitted by the Complainant and particularly given the fact that the Domain Name resolves to a website which offers sponsored advertising links to the Complainant`s products and products which compete with the Complainant, not only that the Respondent`s use of the Domain Name is not bona fide, but that the Respondent is making an unfair use of the Domain Name with intent for commercial gain to misleadingly divert consumers from the Complainant or tarnish the Complainant`s BANANA REPUBLIC brand.

The Panel accordingly is satisfied that the Complainant has made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent and accordingly that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registration and use in bad faith

The Panel accepts that the Complainant`s BANANA REPUBLIC trade marks are well-known in the United States and internationally. As such, the Panel considers that it is implausible that the Respondent did not have knowledge of the Complainant`s BANANA REPUBLIC trade marks at the time of registering the Domain Name.

It is difficult to foresee many circumstances where the registration and use of the Domain Name could be said to be bona fide when its registration and use has occurred in the full knowledge of the Complainant`s prior rights in the BANANA REPUBLIC trade mark.

The BANANA REPUBLIC brand is unique and cannot be said to be generic in relation to any particular goods or services. Accordingly there is no objective reason or justification for the selection of the Domain Name by the Respondent other than to capitalise on the Complainant`s goodwill in the BANANA REPUBLIC brand.

The Domain Name resolves to a sponsored listings page containing links and/or references to the Complainant`s competitors (e.g. Coach and Guess) and also to the Complainant`s BANANA REPUBLIC brand (e.g. "Bananarepublic" and "Bananarepublic Clothing").

It is readily apparent that the Respondent trades on a simple spelling mistake of the Complainant`s trade mark to attract users to its website. No doubt the association of the Domain Name with the Complainant`s BANANA REPUBLIC brand causes a diversion of Internet traffic to the extent that the Complainant`s customers mistakenly type the Domain Name into the browser rather than the Complainant`s <bananarepublic.com> domain name.

The Panel finds that the confusing similarity between the Complainant`s trade mark and the Domain Name is being been exploited by the Respondent who, in using the Domain Name, is clearly seeking to capitalise on the Complainant`s goodwill in the BANANA REPUBLIC trade mark for the purpose of attracting, for commercial gain, third parties to the Respondent`s website thereby creating a likelihood of confusion with the Complainant`s BANANA REPUBLIC marks as to source or affiliation. The presence of links on the Respondent`s website which correspond to the Complainant`s BANANA REPUBLIC marks strengthens this finding. See for example Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562 and Accolo, Inc. v. St Kitts Registry, WIPO Case No. D2007-1932.

The Respondent`s registration of domain names has been successfully challenged through administrative complaint proceedings on at least eight occasions. These cases demonstrate that the Respondent has engaged in a pattern of domain name cybersquatting which, considered together with the use by the Respondent of a WHOIS privacy shield to conceal the Respondent`s identity and the unwillingness of the Respondent to engage in discussions with the Complainant to resolve the matter amicably, all lend further support the Panel`s finding that the Respondent has registered and used the Domain Name in bad faith.

The Panel is satisfied that the Respondent has registered and used the Domain Name in bad faith for the purposes of paragraph 4(a)(ii) of the Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bananarepbulic.com> be transferred to the Complainant.

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Gabriela Kennedy
Sole Panelist

Dated: April 8, 2009