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GAP (Apparel), LLC v. Cher Fang Lim [2005] GENDND 2079 (30 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GAP (Apparel), LLC v. Cher Fang Lim

Case No. D2005-1165

1. The Parties

The Complainant is GAP (Apparel), LLC, Two Folsom, San Francisco, California, of United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Cher Fang Lim, Cheras, Kuala Lumpur, of Malaysia.

2. The Domain Name and Registrar

The disputed domain name <gapclothing.info> (the “Domain Name”) is registered with NamesDirect.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2005. On November 9, 2005, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On November 9, 2005, NamesDirect.com 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 November 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2005.

The Center appointed Steven A. Maier as the Sole Panelist in this matter on December 19, 2005. 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.

Having reviewed the communications in the light of the Respondent’s non-response, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2 of the Rules to notify the Respondent of this Complaint. Under paragraph 14(a) of the Rules, where a party fails to comply with the time limits provided by the Rules, the Panel shall proceed to a decision on the Complaint in the absence of exceptional circumstances. The Panel is aware of no such circumstances in this case.

4. Factual Background

The Domain Name was registered by the Respondent on November 25, 2004.

The Complainant’s submissions of fact, which in the absence of a Response are uncontested, may be summarized as follows:

(1) The Complainant is a corporation incorporated in the state of California. It is the owner of the famous trademark GAP in connection with its retail clothing business. Its stock is listed on the New York Stock Exchange and it is one of the most famous international companies in the world.

(2) The Complainant is the owner of 124 US trademark registrations for the mark GAP and marks containing the term GAP, such as GAP KIDS and BABY GAP. It owns numerous similar trademark registrations throughout the world.

(3) The Complainant has used the GAP mark in connection with retail stores since 1969 and on private label clothing since 1974. It operates over 1,645 retail stores under the GAP mark worldwide and trades in approximately 37 countries. It operates e-commerce websites at “www.gap.com”, “www.gapkids.com” and “www.babygap.com”. These sites receive between 250,000 and 450,000 hits per day. The Complainant spends hundreds of millions of dollars to advertise and promote its stores under the GAP mark and in 1974, its activities generated sales in excess of $16.267 billion.

The Complainant exhibits substantial documentation evidencing its history and international reputation as a leading clothing retailer under the GAP mark.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its GAP trademarks, because the dominant and distinctive element of the Domain Name consists of the mark “gap” and the remainder consists of the descriptive term “clothing”.

The Complainant further contends that the Respondent is unable to demonstrate any legitimate interest in the Domain Name. In particular, there is no relationship between the parties that would give rise to any licence or permission for use of the Domain Name.

The Complainant further contends that the Respondent registered and is using the Domain Name in bad faith. In particular:

(1) the Respondent has linked the Domain Name to a website displaying pornography and other adult content as well as links to other sexually explicit sites. The Complainant contends that the Respondent derives revenue from the diversion of Internet users to these sites;

(2) the Respondent is the owner of other domain names including well-known trademarks that also link to the same pornographic website;

(3) the use of the Domain Name to link to a pornographic website in this way is prima facie evidence of bad faith (See e.g. Ty Inc v. O.Z. Names WIPO Case No. D2000-0370) and such use of the Domain Name tarnishes the Complainant’s name and trademarks (See e.g. Sparco S.p.A. v. Filipov-Guevreyan WIPO Case No. DLA2003-0001).

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i)that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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

The Complainant has established that it is the owner of the registered trademark GAP in numerous territories and that it has a substantial international reputation in that mark in the field of clothing retail. Accordingly the Panel finds that the Complainant has rights in the mark GAP for the purpose of paragraph 4(a) of the Policy. While the operative part of the Domain Name is “gapclothing” rather than “gap”, the Panel accepts the Complainant’s submission that “gap” is the dominant and distinctive part of the name and that the addition “clothing” is merely descriptive. In the circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, there are three sets of circumstances in particular (but without limitation) to which the Respondent may point to demonstrate a legitimate interest in the domain name in dispute. These are:

(i) before any notice to the Respondent of the dispute, its 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) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has tendered no evidence in this case, and on the evidence available to it the Panel does not consider that any of the above, or any other circumstances which would tend to support the Respondent’s legitimate interest in the Domain Name, are present. It is to be inferred from all the circumstances that the Respondent registered and is using the Domain Name with the primary intention of diverting internet users who intend to seek information concerning the Complainant’s products to its own website offering pornography and other adult services. This is unfairly to take advantage of the Complainant’s goodwill. To the extent that the Respondent is using the Domain Name to offer goods and services, such offering is not bona fide in the circumstances. There is no evidence that the Respondent has been commonly known by the Domain Name, and the circumstances set out in subparagraph (iii) above plainly do not apply; indeed the reverse of those circumstances is true.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”

The Panel finds that the Respondent’s registration and use of the Domain Name falls within this provision. The present case involves the deliberate diversion of Internet users who intend to access a website connected to the Complainant and the taking of unfair advantage of the Complainant’s goodwill. It is the case that internet users who visit the Respondent’s website would be unlikely to be confused into believing that it was the Complainant’s website. However, in the view of the Panel and in line with other decided cases under the Policy, the deliberate creation of “initial interest confusion” and the consequent diversion of internet traffic is sufficient to establish bad faith on the Respondent’s part.

7. Decision

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 <gapclothing.info> be transferred to the Complainant.

Steven A. Maier
Sole Panelist

Dated: December 30, 2005