Target Brands, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1301001478244
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tagret.com>, registered with INTERNET.BS CORP.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 2, 2013; the National Arbitration Forum received payment on January 8, 2013.
On January 8, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <tagret.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2013 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@tagret.com. Also on January 9, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent is not commonly known by the <tagret.com> domain name.
ii. Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites, some of which are not associated with Complainant, and, in some cases, are associated with Complainant’s competitors.
i. Respondent is a well-known cybersquatter with over 25 prior UDRP decisions rendered against it.
ii. Respondent is obtaining commercial gain from its use of the website at the <tagret.com> domain.
iii. Respondent was put on actual as well as constructive notice of Complainant’s marks as well as its various trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its TARGET mark.
2. Respondent’s <target.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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(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.”).
Complainant, Target Brands, Inc., contends that it is now one of the most famous brands in the field of retail department stores. Complainant argues that it currently serves customers through approximately 1,750 stores in the United States. Complainant asserts that it generates significant sales revenue as a result of the advertising and marketing it conducts on its <target.com> website. Complainant argues and shows that it is the owner of trademark registrations with the USPTO for its TARGET mark (e.g., Reg. No. 818,410, registered November 8, 1966). See Complainant’s Exhibit E-1 to E-6. The Panel notes that although Respondent appears to reside in Chile, Policy ¶ 4(a)(i) only requires that Complainant establish its rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, the Panel concludes that Complainant’s registration of the TARGET mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <tagret.com> domain name is confusingly similar to Complainant’s TARGET mark as it misspells Complainant’s trademark. The Panel notes that Respondent transposes the letters “r” and “g” in Complainant’s TARGET mark for its disputed domain name. The Panel finds that Respondent transposing letters in a domain name does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel determines that the addition of a gTLD does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Therefore, the Panel concludes that Respondent’s <tagret.com> domain name is confusingly similar to Complainant’s TARGET mark under Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <tagret.com> domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “PPA Media Services / Ryan G Foo” as the registrant. See Complainant’s Exhibit B-1 to B-6. Complainant contends that Respondent does not operate a business or other organization under such marks or names and does not own any trademark or service mark rights in these names. The Panel also notes that Respondent has not provided additional evidence that it is commonly known by the disputed domain name. Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites, some of which are not associated with Complainant, and, in some cases, are associated with Complainant’s competitors. Complainant argues that Respondent’s disputed domain name resolves to a website that provides links to Office Max, Wal-Mart, K-Mart, and others. See Complainant’s Exhibit F-1 to F-2. Complainant contends that searchers for Complainant’s various goods and services who found the <tagret.com> domain would be confused and think they were visiting a site of Complainant’s until they discovered that they were in a director of links to competitors and other goods and services. The Panel determines that Respondent’s use of the disputed domain name to provide links to Complainant’s competitors is not 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant asserts that Respondent is a well-known cybersquatter with over 25 prior UDRP decisions rendered against it. See Kohl’s Illinois, Inc., v. PPA Media Services / Ryan G Foo, FA 1470418 (Nat. Arb. Forum Dec. 27, 2012); Google Inc. v. PPA Media Services / Ryan G Foo, FA 1468207 (Nat. Arb. Forum Dec. 12, 2012); FANDANGO, LLC v. PPA Media Services / Ryan G Foo, FA 1439412 (Nat. Arb. Forum Jun. 4, 2012). Complainant contends that Respondent has registered the <tagret.com> domain name to prevent Complainant from reflecting its TARGET mark in a corresponding domain name. The Panel finds that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer demonstrate bad faith use and registration in the present instance under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant argues that Respondent is obtaining commercial gain from its use of the website at the <tagret.com> domain. Complainant argues that Respondent’s disputed domain name resolves to a website that contains a directory or “pay-per-click” website providing a listing of hyperlinks, some of which lead to the websites of Complainant’s competitors. Complainant argues that Respondent’s disputed domain name resolves to a website that provides links to Office Max, Wal-Mart, K-Mart, and others. See Complainant’s Exhibit F-1 to F-2. Complainant contends that each time a searcher clicks on one of the search links located on Respondent’s website, Respondent receives compensation from the various website owners who are linked through the <tagret.com> domain. The Panel finds that Respondent’s use of the disputed domain name to provide links to Complainant’s competitors evidences bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant contends that Respondent was put on actual as well as constructive notice of Complainant’s marks as well as its various trademark registrations. Complainant argues that Respondent intentionally used Complainant’s TARGET mark without consent from Complainant. Although prior panels have not regarded constructive notice to be sufficient to establish bad faith, the Panel finds that, due to the fame of Complainant’s mark, Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tagret.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 14, 2013
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