Target Brands, Inc. v. Christian Grey
Claim Number: FA2101001928766
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners, LLC, District of Columbia, USA. Respondent is Christian Grey (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <checktargetgiftcardbalance.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2021; the Forum received payment on January 18, 2021.
On January 19, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <checktargetgiftcardbalance.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 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2021 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@checktargetgiftcardbalance.com. Also on January 19, 2021, 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 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the TARGET trademark established through its ownership of its portfolio of trademark and service mark registrations described below and the goodwill that it has acquired by use of the mark in connection with its sale of goods and the related services that it provides at approximately 1,750 retail stores in the United States and a number of other countries around the world.
Complainant submits that the disputed domain name is identical or confusingly similar to the trademark TARGET in which it has rights, arguing that the disputed domain name contains Complainant’s TARGET trademark preceded by the generic word “check” and followed by the words “gift”, “card”, and “balance”.
Numerous panels established under the Policy have found that the mere addition of generic or other short words or letters to a trademark creates a confusingly similar domain name. Citing Tyco International Services GmbH v. TYCOINT SCOT, FA 1590501 (Forum, 2014) (in relation to the domain <Tycointl.com>, the Panel held that “[t]he disputed domain name is identical to Complainant’s registered trademark, but for the addition of the term ‘intl,’ a common abbreviation for the generic term ‘international,’ and the ‘.com’ top-level domain.”).
Complainant submits that Internet searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between the Complainant’s mark and Respondent as a consequence of Respondent’s use of the disputed domain name.
Complainant additionally alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent, whom the WhoIs record for the disputed domain name lists as “Christian Grey”, is not commonly known by the disputed domain name, or the TARGET name or mark.
Complainant adds that Respondent does not use the TARGET mark to operate a legitimate business or other organization, nor has Complainant any trademark or service mark rights in TARGET. Citing Dell Inc. v. George Dell and Dell Net Solutions, D2004-0512 (WIPO Aug. 24, 2004) (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.”).
Referring to a screenshot of the website to which the disputed domain name resolves, which has been adduced in evidence as an exhibit to the Complaint.
Complainant submits that the screenshot shows that Respondent is using the disputed domain name, that is confusingly similar to its TARGET mark, to pass off his website as a legitimate website that is owned or associated with Complainant. Complainant adds that Respondent’s website mimics Complainant’s own website at <www.target.com> by use of its distinctive red color scheme and the appearance of a photograph of a woman holding various retail shopping bags.
Complainant further refers to the screenshot, arguing that it illustrates that Internet users visiting Respondent’s website are invited to input the “Card Number” and “Pin” of their “TARGET” store gift card. Complainant submits that that Respondent is thereby aiming to deceive visitors encouraging them to divulge information related to Complainant’s genuine TARGET store gift cards so that Respondent or others may steal the value stored on such cards.
Complainant submits that such use cannot be a bona fide use of the TARGET mark.
Complainant adds that it follows that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Citing Advance Magazine Publishers Inc., The Conde Nast Publications Limited v. Dean Aslett / Whoisguard Protected, Whoisguard, Inc., D2016-1787 (WIPO Nov. 15, 2016) (where Complainant owns the trademark VOGUE and Respondent uses the domain vogue-asia.com for a website devoted to fashion news of Hong Kong, “the Panel does not consider that the website at the disputed domain name is a legitimate noncommercial website set up only for the purposes of criticism or the provision of news. The website has a distinctly commercial focus and appears to include sponsored advertisements relevant to its readership.”).
Lastly, Complainant contends that Respondent’s use of the disputed domain name has tarnished and diluted its TARGET mark. Respondent has diminished consumers’ capacity to associate the mark with the quality products and services that Complainant offers under the mark, by using the mark in association with an unrelated site that seeks to steal money from Complainant’s customers. Citing Avid Dating Life Inc. v. Calico Draconia, D2015-1324 (WIPO Sep. 21, 2015) (“tarnishment refers to unseemly conduct”).
Complainant also alleges that the disputed domain name was registered and is being used in bad faith, submitting that the Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
Complainant argues that Respondent intentionally registered and uses the TARGET mark without consent from Complainant. Complainant adds that Respondent was put on actual notice of Complainant’s rights in its mark through Complainant’s extensive prior use of the mark which long predates the creation date of the <checktargetgiftcardbalance.com> domain name.
Furthermore, Complainant submits that Respondent is seeking to obtain commercial gain from its use of the disputed domain name through confusion with Complainant’s mark.
Respondent’s use of the <checktargetgiftcardbalance.com> domain name to resolve to a fraudulent gift card balance checking website results in a commercial gain by stealing money from website visitors. Upon information and belief, Respondent uses the information that is input to its website to defraud visitors by either directly using the gift card information to exploit the monetary value stored on the card or by selling such information to others who will so exploit it,
Additionally, Complainant submits that Respondent’s true identity was only discovered when its Registrar removed the privacy protection for the WhoIs record relating to the disputed domain after the filing of the Complaint in this matter. Complainant argues that such use of a privacy service shows that Respondent does not wish to be identified and held accountable for its actions which is further evidence of bad faith registration and use. Citing Beijing Qunar Information Technology Co., Ltd. v. Premium Registration Service / Zheng ZhongXing, D2013-0281 (WIPO Apr. 24, 2013)(“the fact that the disputed domain name was registered anonymously and protected by Premium Registration Service is consistent with bad faith in this Panel’s view.”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and manages retail department stores and owns and uses the TARGET mark for its goods and retail services. Complainant is the owner of a portfolio of registered trademarks that includes:
· United States registered trademark TARGET, registration number 818,410, registered on November 8, 1966;
· United States registered service mark TARGET (device), registration number 845, 615, registered on the Principal Register on March 5, 1968;
· United States registered service mark, TARGET, registration number 845, 193, registered on the Principal Register on February 27, 1968;
· United States registered trademark TARGET, registration number, 3896937, registered on the Principal Register on December 28, 2010 for goods in international class 9;
· European Union Trade Mark TARGET, registration number 1771229, registered on March 21, 2007 for services in classes 35 and 42;
· European Union Trade Mark TARGET, registration number 2733228, registered on September 20, 2010 for goods and services in classes 25, 28 and 35.
Complainant has an established Internet presence and maintains a website at <www.target.com> to market its goods and services.
The disputed domain name was registered on December 3, 2019 and resolves to a website purporting to check Internet users’ balances on gift cards issued by Complainant. The Registrant availed of a privacy service to conceal his identity on the published WhoIs.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details for the disputed domain name in the course of this proceeding. The Registrar confirmed that Respondent is the registrant.
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”).
Complainant has provided clear and uncontested evidence of its ownership of rights in the TARGET trademark established through its ownership of its portfolio of trademark registrations listed above and the goodwill that it has acquired by use of the mark in connection with its sale of goods and the related services in approximately 1,750 retail stores in the United States and other jurisdictions across the world.
The disputed domain name <checktargetgiftcardbalance.com> consists of the words “check”, “gift”, “card” and “balance” together with the generic Top-Level Domain (“gTLD”) extension <.com>, in combination with Complainant’s TARGET trademark.
Complainant’s trademark is the dominant and only distinctive element of the disputed domain name, the elements of which, taken in combination, are a reference to a service providing checks on the balances remaining on gift cards issued by Complainant.
In these circumstances, this Panel finds that the disputed domain name is confusingly similar to the TARGET mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name on the grounds that:
· Respondent, named on the registration record for the disputed as “Christian Grey”, is not commonly known by the disputed domain name or by the name or mark TARGET;
· Respondent intentionally registered and uses the TARGET mark without consent from Complainant;
· Respondent does not use the TARGET mark to operate a legitimate business or other organization;
· nor has Complainant any trademark or service mark rights in TARGET;
· the screenshot of the website to which the disputed domain name resolves, shows that Respondent is using the disputed domain name, that is confusingly similar to its TARGET mark, to pass off his website as a legitimate site owned or associated with Complainant;
· Respondent’s website mimics that of Complainant by use of its distinctive red color scheme and the appearance of a photograph of a woman holding various retail shopping bags;
· Respondent is using the disputed domain name to divert and deceive Internet users visiting Respondent’s website who are invited to input the “Card Number” and “Pin” of their “TARGET” store gift card;
· Respondent is thereby aiming to deceive visitors encouraging them to divulge information related to Complainant’s genuine TARGET store gift cards so that Respondent or others may steal the value stored on such cards;
· such use cannot be a bona fide use of the TARGET mark or a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain; and
· Respondent’s use of the disputed domain name has tarnished and diluted its TARGET mark and has diminished consumers’ capacity to associate the TARGET mark with the products and services offered under the mark by Complainant.
It Is well established that when a complainant makes out a prima facie case, the burden of production shifts to the respondent to prove such rights or interests. Respondent has failed to discharge that burden and so this Panel must find that Complainant on that balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the evidence adduced, this Panel finds that the registrant was aware of Complainant, its name, mark and rights when the disputed domain name was registered.
Complainant’s rights long pre-dated the registration of the disputed domain name. TARGET is a distinctive mark. The elements of the disputed domain name are a reference to the gift cards that Complainant produces for use in its retail business and related services. The website to which the disputed domain name resolves purports to offer a service checking the balance on these gift cards for unsuspecting, misled, consumers.
This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of Complainant’s goodwill and reputation. It is implausible that the registrant was unaware of Complainant when the disputed domain name was registered and furthermore it is improbable that the disputed domain name was registered for any reason other than to misdirect and confuse Internet users.
Complainant has alleged but has not provided any evidence that Respondent is using of disputed domain name for a fraudulent purpose to steal money from website visitors. This allegation has not been denied by Respondent. It is not necessary to make this decision on that point however.
Complainant has provided clear and uncontested evidence that Respondent is passing himself off as Complainant and using the TARGET mark to misdirect consumers.
This Panel finds that Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet searchers to his website by creating a likelihood of confusion with Complainant’s TARGET mark as to source, sponsorship, affiliation, or endorsement of his website and the services that Respondent purports to offer on his website.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <checktargetgiftcardbalance.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: February 12, 2021
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