Target Brands, Inc. v. Sandy Singh
Claim Number: FA2001001879972
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners, LLC, United States. Respondent is Sandy Singh (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetbalances.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2020; the Forum received payment on January 28, 2020.
On January 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <targetbalances.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@targetbalances.com. Also on January 30, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Target Brands, Inc., is in the business of operating retail department stores. Complainant has rights in the TARGET mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 845,615, registered Mar. 5, 1968). See Compl. Ex. E. Respondent’s <targetbalances.com> domain name is identical and/or confusingly similar to Complainant’s mark because it incorporates Complainant’s TARGET mark in its entirety, simply adding the generic term “balance” and the “.com” generic top-level domain (“gTLD”) to form the disputed domain name. Respondent does not have rights or legitimate interests in the <targetbalances.com> domain name. Respondent uses Complainant’s TARGET mark without consent and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to mimic Complainant’s website for fraudulent purposes.
Respondent registered and uses the <targetbalances.com> domain name in bad faith. Respondent attempts to sell the domain name at a price that far exceeds out-of-pocket costs. Further, Respondent attempts to commercially benefit by defrauding Complainant’s customers. Additionally, Respondent used a privacy service to conceal its identity. Finally, Respondent has actual knowledge of Complainant’s rights in the TARGET mark as seen through the notoriety of Complainant’s mark and the content on Respondent’s webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is in the business of operating retail department stores.
2. Complainant has established its trademark rights in the TARGET mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 845,615, registered Mar. 5, 1968).
3. Respondent registered the disputed domain name on October 11, 2019.
4. Respondent uses the domain name to mimic Complainant’s website for fraudulent purposes.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the TARGET mark based upon the registration with the USPTO (e.g., Reg. No. 845,615, registered Mar. 5, 1968). See Compl. Ex. E. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the TARGET mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TARGET mark. Complainant argues that Respondent’s <targetbalances.com> domain name is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s TARGET mark in its entirety, simply adding a generic term and a gTLD to form a domain name. Addition of generic and/or descriptive terms and a gTLD to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Here, Complainant argues that Respondent simply adds the generic term “balance” and the “.com” gTLD. Thus, the Panel finds that the disputed domain name is confusingly similar to the TARGET mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TARGET trademark and to use it in its domain name, adding the generic word “balances” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on October 11, 2019;
(c) Respondent uses the domain to mimic Complainant’s website for fraudulent purposes;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <targetbalances.com> domain name because Respondent uses Complainant’s TARGET mark without consent and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Sandy Singh” as the registrant and no information suggests that Complainant has consented to Respondent’s use of the TARGET mark. See Amend. Compl. Ex. B. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead uses the domain name to mimic Complainant’s website for fraudulent purposes. Use of a confusingly similar domain name by a registrant to pass itself off as a complainant is not a bona fide offering of goods or services, or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Complainant notes that Respondent’s website is designed to mimic Complainant’s website in order to deceive visitors into divulging information related to Complainant’s gift cards. Complainant provides a screenshot of the resolving webpage at the disputed domain. See Compl. Ex. F. Therefore, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <targetbalances.com> domain name in bad faith because Respondent attempts to sell the domain name at a price that far exceeds out of pocket costs. An offer to sell an infringing domain name for a price in excess of the registration cost is evidence of bad faith under Policy at ¶ 4(b)(i). See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). Complainant provides a copy of an email in which Respondent offers to sell the domain name for $10,000. See Compl. Ex. G. Therefore, the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent registered and uses the <targetbalances.com> domain name in bad faith because Respondent attempts to benefit commercially by defrauding Complainant’s customers. Use of a disputed domain name to perpetrate fraudulent schemes is evidence of bad faith per Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). Complainant provides a screenshot of Respondent’s webpage and notes that users’ gift card balances are immediately drained upon inputting their details at Respondent’s website. See Compl. Ex. F. Thus, the Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent has actual knowledge of Complainant’s rights in the TARGET mark as seen through the notoriety of Complainant’s mark and the content on Respondent’s webpage. Actual knowledge of a complainant’s rights in a mark can be shown through Respondent’s use of the mark and Complainant’s other information in connection with the domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”) Here, Complainant provides screenshots of Respondent’s website and argues that Respondent’s use of Complainant’s bulls-eye logo and dog graphic reveal that Respondent has actual knowledge of Complainant’s rights. See Compl. Ex. F. As the Panel agrees that Respondent’s use evidences actual knowledge, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TARGET mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetbalances.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 26, 2020
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