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Gap.org : Respondent lost #UDRP against 22 year old #domain name

Gap.org, a 22-year old domain that allegedly sold for $3,850 on Flippa, has been lost via the UDRP process.

The domain’s listing used a sales pitch as “gap insurance” but was not used in this manner, and The GAP, Inc. filed a UDRP which they won.

Decision: Transfer the domain to the Complainant. Full details on this decision follow:

The Gap, Inc., Gap (Apparel), LLC, and Gap (ITM) Inc. v. Registration Private, Domains By Proxy, LLC / Michael McMorrow
Case No. D2019-2337

1. The Parties

Complainants are The Gap, Inc., United States of America (“United States”), Gap (Apparel), LLC, United States, and Gap (ITM) Inc., United States, represented by Fross Zelnick Lehrman & Zissu, P.C., United States.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Michael McMorrow, United States.

2. The Domain Name and Registrar

The disputed domain name <gap.org> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 27, 2019, the Registrar 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 Complainant on October 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 11, 2019. On the same date, the Center received an informal email communication from Respondent. That email stated in full: “Hello, I’ve not asked to update information to my domain – please do not adjust anything. Thanks.”

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2019. Respondent did not submit any formal response. Accordingly, the Center notified the Parties on November 7, 2019, that it would proceed to panel appointment.

The Center appointed Robert A. Badgley as the sole panelist in this matter on November 25, 2019. 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

Complainant alleges:

Complainant is one of the world’s leading retailers of clothing, accessories, personal care products and other merchandise. Since 1969, consumers have come to Complainant’s GAP stores and subsequently its “www.gap.com” website for casual clothing and accessories, all of which are sold under the well known GAP trademark. Complainant’s retail stores have been a top destination for wardrobe essentials such as T-shirts, sweatshirts, pants and jeans for decades. Indeed, Complainant has become a cultural icon by offering high-quality clothing and accessories rooted in cool, confident and casual style to customers around the world.

Complainant holds several registered trademarks for GAP, including United States Patent and Trademark Office Reg. No. 1,129,294 (registration date January 15, 1980) for GAP in connection with clothing including pants, jeans, skirts, and other items. This registration shows a 1974 first use in commerce.

As is demonstrated in the record, Complainant has marketed its products extensively under the GAP mark for many years, including television and radio advertisements, magazine advertisements, a strong social media presence, and so forth. Complainant and its GAP marks have been widely recognized in unsolicited media articles. In the most recent fiscal year, Complainant’s sales exceeded USD 5.1 billion.

The Domain Name was registered on April 22, 1997. Complainant asserts that Respondent first acquired the Domain Name on or around January 22, 2015. The Domain Name does not currently resolve to an active website.

According to Complainant (and as corroborated by a screenshot annexed to the Complaint), “immediately following Respondent’s acquisition of the Domain Name, Respondent placed the Domain Name up for sale at auction via a domain broker at flippa.com”. At the time of the screenshot, the site had received nine bids and the highest offer was USD 2,100.

According to Complainant, as corroborated by a screenshot annexed to the Complaint, after the unsuccessful auction of the Domain Name, the site posted a “coming soon” notice for a website about “gap insurance.” The site featured the following text:

“Gap Insurance coming soon
What is gap insurance?
Gap insurance pays for the “gap” between what you owe on your car and what its worth if it’s totaled in a covered accident, theft or other loss. Some providers call it loan/lease payoff coverage.”

Complainant states that “there is no indication that [the “gap insurance”] website ever went live.”

Complainant also alleges that, more recently, the only other use of the Domain Name was to redirect traffic to websites such as “try.watchgang.com”. (A screenshot annex is submitted to support this contention.) This website appears to be a commercial website for wristwatch enthusiasts.

On August 5, 2019, Complainant’s counsel sent a letter to Respondent, stating in full:

“THE GAP INC.’s subsidiary [Gap (Apparel), LLC/Old Navy (Apparel), LLC/Banana Republic (Apparel), LLC/Athleta, Inc.] (“GAP”) is the owner of several trademarks, including the GAP trademarks. As you no doubt are aware, those trademarks are used to identify, advertise and promote GAP products and activities.

It has come to our attention that you have registered without GAP’s permission or authorization, the domain name gap.org. This unauthorized use of GAP’s proprietary intellectual property falsely suggests GAP’s sponsorship or endorsement of your website.

We ask that you immediately discontinue any and all use of the subject domain name and take steps to transfer the name to GAP.

Should you require additional information or wish to discuss this issue further contact us within 5 days.”

Respondent replied on August 15, 2019, stating in full:

“Hello and thank you for your email. The domain in question will be used for charitable purposes and has nothing to do with GAP INC and does not suggest in anyway the endorsement of GAP INC. As such, we will ensure proper verbiage exists on the gap.org domain and have since removed access to the website until such changes are made.

Please feel free to respond with any questions or concerns.”

On September 3, 2019, Complainant’s counsel emailed Respondent as follows:

“Thank you for your quick response and action to our notice. Although we appreciate your charitable site plan, the previous content was a watch subscription service. Protecting our brand is our top priority and we ask that you transfer the domain to GAP Inc. to avoid any further trademark infringement. Please unlock the domain at the registry and provide the transfer authorization code.”

On September 4, 2019, Respondent emailed back:

“I appreciate your concern and feel I have rectified the issue. I have not infringed on any trademarks and the domain will be not used for that purpose. I will not be transferring the domain and will not be responding to any further request to do so.”

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not submit any formal Response.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

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

(ii) 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 in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark GAP through longstanding registration and use demonstrated in the record. The Panel also finds that the Domain Name is identical to Complainant’s registered trademark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, 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.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate why he acquired the Domain Name or otherwise explain his bona fides. Complainant alleges that it has no relationship with Respondent and has not authorized him to use the GAP trademark in a domain name or otherwise.

Respondent asserted in pre-Complaint communications with Complainant’s counsel that he was going to use the Domain Name for unspecified charitable purposes, but he has provided no evidence to corroborate this rather flimsy claim. Further, there is no evidence that Respondent took any steps to use the Domain Name for a website dealing with “gap insurance”. There is no evidence that Respondent has any association with the insurance industry. In short, from this record and the undisputed (and plausible) allegations in the Complaint, it appears that Respondent has never had a legitimate reason to own the Domain Name, and that, instead, he acquired it in order to sell it for a profit.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith under, at a minimum, the above-quoted Policy paragraph 4(b)(i). Complainant’s GAP mark is long established and well known, and the Panel finds, on this record and on a balance of probabilities, that Respondent was well aware of Complainant’s strong mark when registering the Domain Name.

With respect to bad faith use, according to the undisputed record, Respondent immediately put the Domain Name up for auction upon registering it. After nine bids, the top offer to buy it was USD 2,100. Because the Domain Name remains in Respondent’s hands, it is reasonable to infer that Respondent sought more than USD 2,100 to sell the Domain Name. There is no evidence that Respondent’s out-of-pocket costs associated with the Domain Name equal, or even approach, USD 2,100. Complainant alleges that Respondent’s actual asking price is much higher than USD 2,100, and Respondent has not denied that plausible allegation.

Complainant has established Policy, paragraph 4(a)(iii).

7. 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 <gap.org> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: November 25, 2019


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Comments

3 Responses to “Gap.org : Respondent lost #UDRP against 22 year old #domain name”
  1. RB says:

    This decision was an injustice to the defendant and to holders of generic domain names.

    Domain investors beware of the reasoning the domain was held in bad faith. This is a blatant attempt by one panelist to unilaterally deprive domain registrants of their resale rights:

    “With respect to bad faith use, according to the undisputed record, Respondent immediately put the Domain Name up for auction upon registering it. After nine bids, the top offer to buy it was USD 2,100. Because the Domain Name remains in Respondent’s hands, it is reasonable to infer that Respondent sought more than USD 2,100 to sell the Domain Name. There is no evidence that Respondent’s out-of-pocket costs associated with the Domain Name equal, or even approach, USD 2,100. Complainant alleges that Respondent’s actual asking price is much higher than USD 2,100, and Respondent has not denied that plausible allegation.”

  2. DomainGang says:

    RB – It seems that the Respondent did not submit any formal Response. It’s easy to point out one aspect of the domain (“genericness”) but what matters is how it’s used – or not used. While it was advertised as suitable for “gap insurance” purposes, no such utilization took place.

    Moral of the story: domains that can be on the fence of tm infringement have to be utilized in a manner that distances them from the tm.

  3. RB says:

    Fair enough.

    But my takeaway on the moral of the story is that the UDRP is written in such a manner that corporate hawks like the Gap can use it to find a way to seize domain registrants’ property. This guy was not competing against the Gap, he did not try to sell it to them, and there are many organizations using the common letters GAP as their acronym.

    A redirect to a site for wristwatch enthusiasts so threatened the Gap’s multibillion dollar clothing business. That was the reasoning the Gap used to seize this property? Cmon. Total BS.

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