Target Brands, Inc. v. Simon Rahman / Yousuf Mamun
Claim Number: FA2204001991631
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is Simon Rahman / Yousuf Mamun (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <targetpayandbenefits.biz>, <targetpayandbenefits.me>, <targetpayandbenefits.bid>, <targetpayandbenefits.one>, <targetpayandbenefits.page>, <targetpayandbenefits.top>, and <targetpayandbenefits.win>, registered with NameSilo, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2022; the Forum received payment on April 8, 2022.
On April 8, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <targetpayandbenefits.biz>, <targetpayandbenefits.me>, <targetpayandbenefits.bid>, <targetpayandbenefits.one>, <targetpayandbenefits.page>, <targetpayandbenefits.top>, and <targetpayandbenefits.win> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 April 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2022 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@targetpayandbenefits.biz, postmaster@targetpayandbenefits.me, postmaster@targetpayandbenefits.bid, postmaster@targetpayandbenefits.one, postmaster@targetpayandbenefits.page, postmaster@targetpayandbenefits.top, postmaster@targetpayandbenefits.win. Also on April 12, 2022, 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 May 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that the domain names are under common control as each of the disputed domain names use an identical naming pattern of adding a new generic top-level domain (“gTLD”) to the phrase “Target Pay and Benefits”; each of the disputed domain names lists one of two addresses in the city of Dhaka, Bangladesh; all of the disputed domain names were registered in two large clusters on two dates in 2020, April 13, 2020 and November 9, 2020; the WHOIS information for all the disputed domain names lists email addresses using the same “@opayq.com” address. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on all seven contested domain names, and the registrants are collectively referred to as “Respondent”.
A. Complainant
Complainant states that it operates a large retail department store chain throughout the United States. Created in Minneapolis, Minnesota in 1962 as a division of the former Dayton Hudson Corporation, Complainant is now one of the most famous brands in the field of retail department stores. Complainant currently serves customers through approximately 1,750 stores in the United States, maintains offices in a number of other countries around the world. In its fiscal year 2021, Complainant reported revenues of over US$106 billion. Complainant’s accolades include being named one of America’s Most Admired Companies by Fortune Magazine from 2009-2016, receiving recognition as one of the “Top 50 Companies for Diversity” in 2016 from the DiversityInc Magazine, and Fortune magazine ranked Complainant No. 15 on its list of the 20 Most Generous Companies of the Fortune 500. Complainant operates a website at <targetpayandbenefits.com>. Complainant asserts rights in the TARGET mark through its registration in the United States in 1966. The mark is famous.
Complainant alleges that the disputed domain names are identical or confusingly similar to its TARGET mark, as they incorporate the mark in its entirety, merely adding the descriptive/generic phrase “Pay and Benefits” and a gTLD. Complainant cites UDRP proceedings to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names as it is not commonly known by any of the disputed domain names and is neither an authorized user nor licensee of the TARGET mark. Additionally, Respondent fails to use any of the disputed domain names for a bona fide offer of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent uses several of the disputed domain names to either host monetized advertisements, phish and harvest users’ information, or pass off as Complainant to divert Internet users from Complainant’s legitimate website. Additionally, some of the disputed domain names are inactive. Complainant cites UDRP proceedings to support its position.
Further, says Complaint, Respondent registered and uses the disputed domain names in bad faith. First, Respondent has shown a pattern of bad faith registration based on both former UDRP decisions and the fact that Respondent created multiple infringing domain names included in this case. Next, Respondent has attempted to create consumer confusion as to the source or sponsorship of the disputed domain names and diverts Internet users from Complainant’s legitimate websites, disrupting Complainant’s business and likely leading to commercial gain for Respondent. Respondent also appears to redirect several links from the disputed domain names back to one of its websites to artificially increase web traffic and enhance the sites’ search engine optimization (“SEO”) ranking, either to further increase click-through revenue or to appear more authentic. Respondent also fails to include an adequate disclaimer to indicate that its blog sites are not connected with Complainant. Respondent also holds several of the disputed domain names inactively. Finally, Complainant contends that Respondent must have registered the disputed domain names with actual knowledge of its rights in the TARGET mark based on Complainant’s longstanding use and global recognition and because some of the resolving websites display Complainant’s mark and distinctive logo. Complainant cites UDRP proceedings to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark TAREGET and uses it to operate a department store chain. The mark is well known.
Complainant’s rights in its mark date back to 1966.
Four of the disputed domain names were registered on April 13, 2020; the other three on November 9, 2020.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Several of the disputed domain names resolve to websites that host monetized advertisements, phish for Internet users’ personal information, and pass off as Complainant by displaying Complainant’s mark and distinctive logo. The remaining domain names are not being used. Respondent has been found to have registered and used disputed domain names in bad faith in prior UDRP proceedings.
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 disputed domain names all incorporate Complainant’s TARGET mark in its entirety, merely adding the generic/descriptive phrase “Pay and Benefits” and a gTLD. This is not sufficient to distinguish the domain names from Complainant’s mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known the disputed domain names: WHOIS information may demonstrate that a Respondent is not commonly known by an infringing domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “Simon Rahman / Yousuf Mamun” as the registrant of the disputed domain names. The Panel therefore finds that Complainant is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Several of the disputed domain names resolve to websites that host monetized advertisements, phish for Internet users’ personal information, and pass off as Complainant by displaying Complainant’s mark and distinctive logo. None of these uses constitutes a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Thus, the Panel finds that Respondent fails to use these disputed domain names to make a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The remaining domain names are not being used. This also fails to meet the qualifications of a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Thus the Panel finds that Respondent also fails to use these domain names to make a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, several of the disputed domain names resolve to websites that host monetized advertisements, phish for Internet users’ personal information, and pass off as Complainant by displaying Complainant’s mark and distinctive logo; in addition, some of the resolving websites display copyrighted material taken from Complainant’s legitimate website. Each of those activities is evidence of bad faith registration and use under the Policy. See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also The Trustees of Columbia University in the City of New York v. Kostiantyn Golubtsov / lama.Media, FA 1925070 (Forum Jan. 13, 2021) (“Respondent’s unauthorized reproduction of Complainant’s copyrighted materials is further evidence of Respondent’s bad faith use and registration of the disputed domain name.”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Also as already noted, some of the disputed domain names are not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain names that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint and Respondent used a privacy service, that is, it attempted to conceal its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though those disputed domain names are not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Some of the resolving websites appear to be blogs, however, they do not display an adequate disclaimer to notify Internet users that they are not connected with Complainant. In any case, past Panels have found that use of a disclaimer does not dispel bad faith under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: some of the resolving websites display Complainant’s mark and distinctive logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent has engaged in a pattern of bad faith registration, both by registering the seven domain names contested in the instant case, and by registrations prior to the instant case: Complainant provides evidence of past UDRP decisions involving Simon Rahman, who is presumably the entity controlling each of the disputed domain names. Under Policy ¶ 4(b)(ii), bad faith can be established by a showing that Respondent is a serial cybersquatter, both through the use of numerous domain names in a single proceeding, and using past adverse UDRP proceedings to which Respondent was a party. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”); see also Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Thus the Panel finds a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetpayandbenefits.biz>, <targetpayandbenefits.me>, <targetpayandbenefits.bid>, <targetpayandbenefits.one>, <targetpayandbenefits.page>, <targetpayandbenefits.top>, and <targetpayandbenefits.win> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 11, 2022
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