Target Brands, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1305001498044
Complainant is Target Brands, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tgarget.com>, <trarget.com>, and <targot.com> registered with Internet.Bs Corp.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 3, 2013; the National Arbitration Forum received payment May 3, 2013.
On May 14, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <tgarget.com>, <trarget.com>, and <targot.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. verified that Respondent is bound by the Internet.Bs Corp. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@tgarget.com, postmaster@trarget.com, postmaster@targot.com. Also on May 20, 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 June 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
a) Complainant contends that it has rights in the TARGET mark, used in connection with retail stores. Complainant is the owner of registrations for the TARGET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 845,193 registered Feb. 27, 1968). See Complainant’s Exhibit E.
b) The disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark.
c) Respondent has no rights or legitimate interests in the <tgarget.com>, <trarget.com>, and <targot.com> domain names.
a. Respondent has not been commonly known by the disputed domain names. The WHOIS record suggests Respondent is not known as the disputed domain names. Complainant has not licensed, authorized, or permitted Respondent to register the disputed domain names.
b. Respondent is using the disputed domain names to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. See Complainant’s Exhibit H.
d) Respondent registered and is using the <tgarget.com>, <trarget.com>, and <targot.com> domain names in bad faith.
a. With respect to the <targot.com> domain name, Respondent has offered it for sale. See Complainant’s Exhibit Q.
b. Respondent is a serial cybersquatter, and has engaged in an ongoing pattern of this type of behavior.
c. The third-party links Respondent has placed on the resolving websites promote products that compete with Complainant. See Complainant’s Exhibit H. This is causing a disruption to Complainant’s business.
d. Respondent is using the disputed domain names to generate click-through revenue by providing links to third-party sites and thus obtaining wrongful commercial gain.
e. Respondent is engaged in typosquatting.
f. Respondent uses some or all of the disputed domain names in connection with a phishing operation.
Respondent did not submit a formal Response, however the Panel notes that in a May 20, 2013, e-mail to the Forum, Respondent claims to be the owner of only the <trarget.com> domain name, and not the <tgarget.com> or <targot.com> domain names.
a) The Panel notes that Respondent registered the <tgarget.com> domain name November 28, 2009, the <trarget.com> domain name July 16, 2011, and the <targot.com> domain name January 11, 2008.
FINDINGS:
Complainant established that it has rights to and legitimate interests in the disputed domain names.
Complainant established that the disputed domain names are confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 Complainant to 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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant contends that it has rights in the TARGET mark, used in connection with retail stores. Complainant is the owner of registrations for the TARGET mark with the USPTO (e.g., Reg. No. 845,193 registered Feb. 27, 1968). See Complainant’s Exhibit E. Although Complainant does not provide evidence of ownership of a registration in Panama, Respondent’s country of operation, panels have found that registrations with another authority in another country establishes rights under a Policy ¶ 4(a)(i) analysis. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the TARGET mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant next alleges that the <tgarget.com>, <trarget.com>, and <targot.com> domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s TARGET mark. The Panel notes that the <tgarget.com> domain name adds an additional “g” to Complainant’s mark, the <trarget.com> domain name adds an additional “r” to Complainant’s mark, and the <targot.com> domain name replaces the “e” in Complainant’s mark with an “o.” Panels have found that disputed domain names that differ by only one letter are confusingly similar. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also notes that each disputed domain name attaches the generic top-level domain (“gTLD”) “.com.” The Panel considers these alterations to be insignificant to the analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that the <tgarget.com>, <trarget.com>, and <targot.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because they differ from Complainant’s mark by only a single character and a gTLD.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 contends that Respondent has no rights or legitimate interests in the <tgarget.com>, <trarget.com>, and <targot.com> domain names. Complainant alleges that Respondent has not been commonly known by the disputed domain names. In support, Complainant cites the WHOIS record, which suggests that Respondent is not known as the disputed domain names. The Panel notes that the WHOIS record for each of the disputed domain names lists “Fundacion Private Whois” as the domain name registrant. Panels have used the WHOIS record as one factor in determining whether a respondent is commonly known by a disputed domain name. See Tercent Inc. v. 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). Further, Complainant states it has not licensed, authorized, or permitted Respondent to register the disputed domain names using its protected mark in any way. Panels have found that a respondent who has not been authorized to use a disputed domain name, who then fails to submit evidence to support that it is commonly known by the disputed domain name, has no legitimate rights or interests in the domain name containing that mark. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). At least three factors suggest that Respondent is not commonly known by Complainant’s mark, (1) the WHOIS information does not support a finding that Respondent is commonly known as the disputed domain names, (2) Complainant has stated that it did not authorize Respondent to use its TARGET mark, and (3) Respondent has not provided any evidence to the contrary. The Panel finds that Respondent is not commonly known as the <tgarget.com>, <trarget.com>, and <targot.com> domain names for the purposes of a Policy ¶ 4(c)(ii) analysis.
Complainant also alleges that Respondent is using the disputed domain names to redirect unsuspecting Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Panels have found that this type of conduct is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). Therefore, the Panel finds that Respondent’s use of the <tgarget.com>, <trarget.com>, and <targot.com> domain names 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant urges that Respondent registered and is using the <tgarget.com>, <trarget.com>, and <targot.com> domain names in bad faith. With respect to the <targot.com> domain name, Complainant asserts that Respondent offered it for sale. See Complainant’s Exhibit Q. The Panel finds that such an offer supports findings of bad faith registration and use. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). However, the Panel may only make this finding if the Panel determines that the Respondent “registered . . . the domain name primarily for the purpose of selling . . . the domain name” to Complainant or a competitor of Complainant. See Policy ¶ 4(b)(i). Given the similarity to Complainant’s mark and Respondent’s use, the Panel finds that Respondent registered the <targot.com> domain name for the primary purpose of selling it to Complainant or Complainant’s competitors. The Panel finds that Respondent registered and is using the <targot.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant asserts that Respondent is a serial cybersquatter, and has engaged in an ongoing pattern of this type of behavior. The Panel notes that Respondent has been involved in forty-three prior UDRP proceedings, forty of which have resulted in findings of bad faith and the transfer of the disputed domain name or names. See, e.g., Thomson Reuters v. Fundacion Private Whois / Domain Administrator, FA 1439297 (Nat. Arb. Forum May 24, 2012); Chevron Intellectual Prop. LLC v. Fundacion Private Whois / Domain Administrator, FA 1438289 (Nat. Arb. Forum April 16, May 16 2012) (finding respondent registered and used the disputed domain name in bad faith and ordering transfer of the <chevron.com> domain name to complainant). Respondent in the instant case and the Respondent in the previous UDRP decisions cited by Complainant are in fact the same Respondent, and the Panel finds that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant next alleges that the third-party links Respondent placed on the resolving websites promote products that compete with Complainant. See Complainant’s Exhibit H. Complainant states that the disputed domain names are causing a disruption to Complainant’s business. Panels have found such conduct to constitute a bad faith registration and use. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent’s registration and use of the <tgarget.com>, <trarget.com>, and <targot.com> domain names constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is using the disputed domain names to generate click-through revenue by providing links to third-party sites and thus to obtain commercial gain wrongfully. See Complainant’s Exhibit H. Panels have found such conduct to constitute a bad faith registration and use where the respondent has intentionally sought to create confusion with the complainant. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds that Respondent registered and used the <tgarget.com>, <trarget.com>, and <targot.com> domain names to attract Internet users, for commercial gain, by creating confusion as to Complainant’s endorsement of or affiliation with Respondent’s websites. The Panel finds that registration and use for this purpose violates Policy ¶ 4(b)(iv), and represents bad faith on the part of Respondent.
Complainant asserts that Respondent is engaged in typosquatting. Respondent has created a domain name by adding or deleting letters from the Complainant’s mark. The Panel finds that what purports to be a typographic error is actually typosquatting by Respondent. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). In this case, the Panel notes that Respondent’s <tgarget.com> domain name adds an additional “g” to Complainant’s mark, the <trarget.com> domain name adds an additional “r” to Complainant’s mark, and the <targot.com> domain name replaces the “e” in Complainant’s mark with an “o.” Therefore, the Panel finds that Respondent engaged in typosquatting and thus has registered and used the <tgarget.com>, <trarget.com>, and <targot.com> domain names in bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant contends that Respondent uses some or all of the disputed domain names in connection with a phishing operation. Phishing is a practice in which a respondent utilizes a domain name to defraud Internet users into revealing personal information. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). The Panel notes that Complainant made the allegation but did not provide additional evidence to support that claim. Despite the fact that Respondent does not deny such allegations, the Panel finds the evidence insufficient to make such a finding. But See Victoria’s Secret Stores Brand Mgmt., Inc. v. Langham, FA 1345734 (Nat. Arb. Forum Oct. 21, 2010) (concluding that the respondent registered and used the disputed domain name in bad faith when the respondent attempted to acquire personal information by leading Internet users in to believing they are signing up for a gift card from the complainant).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tgarget.com>, <trarget.com>, and <targot.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 25, 2013.
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