national arbitration forum

 

DECISION

 

Target Brands, Inc v. Paul Olkenfold

Claim Number: FA0710001089377

 

PARTIES

Complainant is Target Brands, Inc (“Complainant”), represented by Rita Sanzgiri, of Faegre & Benson, LLP, 1900 Fifteenth Street, Boulder, CO 80302-5414.  Respondent is Paul Olkenfold (“Respondent”), 1234 blah street, oakland, SC 12345, Netherlands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <targetgiftcards.net>, registered with Gandi Sas.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 9, 2007.

 

On October 8, 2007, Gandi Sas confirmed by e-mail to the National Arbitration Forum that the <targetgiftcards.net> domain name is registered with Gandi Sas and that Respondent is the current registrant of the name.  Gandi Sas has verified that Respondent is bound by the Gandi Sas registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On October 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@targetgiftcards.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <targetgiftcards.net> domain name is confusingly similar to Complainant’s TARGET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <targetgiftcards.net> domain name.

 

3.      Respondent registered and used the <targetgiftcards.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Target Brands, Inc., has operated a chain of TARGET retail discount department stores since 1962.  Complainant has more than 1,400 stores in 47 states, and operates an informational and online shopping website.  Complainant registered the TARGET mark with the United States Patent and Trademark Office (“USPTO”) on February 27, 1968 (Reg. No. 845,193).  Complainant also holds valid registrations or has pending trademark applications for the TARGET mark in Argentina, Brazil, Canada, China, Costa Rica, European Union, Hong Kong, India, Mexico, Norway, Singapore, South Africa, South Korea, Switzerland, and Taiwan.

 

Respondent registered the <targetgiftcards.net> domain name on November 18, 2006.  Respondent uses the disputed domain name to redirect Internet users to an adult-oriented website. 

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant registered the TARGET mark with the USPTO and in several other countries, including Respondent’s place of business, thus establishing rights to the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Respondent’s <targetgiftcards.net> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  The disputed domain name contains Complainant’s mark and the generic terms “gift” and “cards”.  Respondent’s use of the generic terms “gift” and “cards” directly relates to Complainant’s popular gift card program by which Complainant issues gift cards to its customers.  Therefore, the inclusion of the generic terms does not sufficiently distinguish the disputed domain name from Complainant’s mark.  Further, the use of the generic top-level domain (“gTLD”) “.net” also does not distinguish the disputed domain name from the TARGET mark because all domain names are required to have a top-level domain.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).        

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant claims that Respondent has no rights or legitimate interests in the <targetgiftcards.net> domain name.  Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant makes a prima facie case supporting its assertion that Respondent does not have rights or legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests, and thus has made a prima facie case pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Respondent failed to answer the Complaint; therefore, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  Despite Respondent’s failure to answer, the Panel will examine the evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).     

 

Complainant contends that Respondent is not, and has never been, a licensee of Complainant or its predecessors-in-interest, and thus has never been commonly known by the <targetgiftcards.net> domain name.  The WHOIS information does not indicate that Respondent is or has been currently known by the disputed domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). 

 

Moreover, Respondent uses the disputed domain name to redirect Internet users to its adult-oriented website.  Previous panels have found, and this Panel also finds, that such a use does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Sony Kabushiki Kaisha  v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and sexually explicit websites). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.   

 

Registration and Use in Bad Faith

 

Respondent is using the <targetgiftcards.net> domain name to redirect users to its adult-oriented website.  Complainant asserts that Respondent is attempting to attract Internet users to its website for commercial gain, benefiting from the likely confusion with the TARGET mark.  The Panel therefore finds that Respondent’s use of the disputed domain name to redirect users to an adult-oriented website constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

Finally, Respondent’s use of the confusingly similar <targetgiftcards.net> domain name for the purpose of operating an adult-oriented website is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oreinted photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.     

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <targetgiftcards.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  November 12, 2007

 

 

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