Target Brands, Inc. v. Domain Hostmaster, CustomerID: 86519751347977,33528701558664,67451560378250 / Whois Privacy Services Pty Ltd
Claim Number: FA1403001550427
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania. Respondent is Domain Hostmaster, CustomerID: 86519751347977,33528701558664,67451560378250 / Whois Privacy Services Pty Ltd (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <wwwtarget.org>, <targett.org>, and <merona.org>, registered with Fabulous.com Pty Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2014; the National Arbitration Forum received payment on March 28, 2014.
On March 24, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <wwwtarget.org>, <targett.org>, and <merona.org> domain names are registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 March 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2014 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@wwwtarget.org, postmaster@targett.org, postmaster@merona.org. Also on March 31, 2014, 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 April 23, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.
Complainant Target Owns Its Marks. Complainant Target is the owner of the distinctive and world famous TARGET and MERONA trademarks and their corresponding logos (the TARGET and MERONA trademarks may be collectively referred to herein as the “Marks”). For many years, and long prior to the creation of the Disputed Domains, Complainant commenced use of the TARGET marks in connection with the advertising, marketing and operation of retail department stores, and other products and services related thereto and the MERONA marks in connection with the sale of apparel for both women and men. Since the inception of each of the Marks, Complainant Target has continually used such Marks in interstate commerce.
The TARGET and MERONA Marks Are Extensively Used, Promoted and Protected. 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 Bangalore, India, and is traded on the New York Stock Exchange under the ticker symbol TGT. In its fiscal year 2009, Complainant reported revenues of US$63.4 billion.
Complainant extensively promotes its TARGET and MERONA Marks through print, web, television, and trade show advertising and expends millions of dollars in this effort. Complainant has also been the subject of extensive media coverage including stories in the New York Times, The Wall Street Journal, CNN and many other outlets. Target is consistently ranked as one of the most philanthropic companies in the U.S. and has been a major benefactor of relief efforts, including monetary and product donations after the September 11th attacks in 2001, the tsunami in South Asia in 2004, and Hurricane Katrina in 2005. The recipient of a number of business awards, Target’s accolades include being named one of America’s Most Popular Stores by Forbes Magazine in 2009, receiving the “Grassroots Innovation Award” in 2010 from the Public Affairs Council for the company’s participation in the National Civic Summit, and being named, by J.D. Power and Associates, as the highest in overall customer service for mass merchandisers 4 years running (2007-2010).
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its <www.Target.com> website and at www.Target.com/bp/Merona. Through this domain, Complainant also provides information to current and prospective customers about the many different products it sells. As a result of Complainant’s long usage and promotion of the TARGET and MERONA Marks, they have become famous and widely recognized by consumers.
The Marks are aggressively protected through registration and enforcement. Complainant Target owns many trademark registrations for the TARGET and MERONA Marks, including trademark registrations as follows:
Mark Goods and Services Reg. No. Reg. Date
TARGET IC 003 005. US 051. G & S: Toothpaste, [ bath oil, ] deodorant preparations for personal use [ , cream rinse ] and aerosol shaving cream. FIRST USE: 19621101. FIRST USE IN COMMERCE: 19651210 0818410 (US) November 8, 1966
TARGET (With Logo) IC 035. US 101. G & S: Retail department store, retail grocery store, retail bakery, prescription compounding and dispensing and restaurant and snack bar services. FIRST USE: 19620430. FIRST USE IN COMMERCE: 19651210 0845615 (US) March 5, 1968
TARGET IC 042. US 101. G & S: Retail department store, retail grocery store, retail bakery, prescription compounding and dispensing, and restaurant and snack bar services. FIRST USE: 19620430. FIRST USE IN COMMERCE: 19651210 0845193 (US) February 27, 1968
TARGET IC 025. US 039. G & S: Men's, women's and children's clothing-namely, hosiery, underwear, [ jeans, ] diapers, sleepwear, infant plastic pants, shirts and gloves. FIRST USE: 19620501. FIRST USE IN COMMERCE: 19651210 1146216 (US) January 20, 1981
TARGET ICs 035 and 042 (see below) 1771229 (CTM) March 21, 2007 (Filed July 24, 2000)
IC 035: Business services in the nature of assistance and advice in the establishment of retail department stores in the field of men's, women's, children's and infants' clothing and accessories, jewelry, clocks, and watches, health and beauty aids, pharmacy and prescriptions, optical supplies, cigarettes and tobacco, records and tapes, books and magazines, men's, women's, children's and infants' shoes, furniture and rugs, trees, plants and flowers, toys and athletic sporting goods, hobby and crafts supplies and equipment, tire, battery, oil, antifreeze and automotive accessory, guns and ammunition, bedding, linens, curtains and draperies, cameras, calculators and telephones, computer hardware, software and accessories, bicycle and bicycle accessories, automotive maintenance and repair supplies and equipment, pet equipment and supplies, giftshop, housewares and tableware, radio, television and sound equipment, video recorders, video tape and video game, tool and hardware, fishing, boating, camping and hunting equipment, garden, lawn and patio equipment and supplies, stationery, office and school supplies, small electrical appliances, electrical and plumbing maintenance and repair supplies and equipment, bakery goods, picture frames and mirrors, and christmas trees, ornaments, decorations, lights and accessories; none of the aforesaid services being market research services, and/or employment agency or personnel management consultancy services.
IC 042: Providing of food and drink; professional consultation (non-business) namely advice in the operating of retail department stores in the field of men's, women's, children's and infants' clothing and accessories, jewellery, clocks, and watches, health and beauty aids, pharmacy and prescriptions, optical supplies, cigarettes and tobacco, records and tapes, books and magazines, men's, women's, children's and infants' shoes, furniture and rugs, trees, plants and flowers, toys and athletic sporting goods, hobby and crafts supplies and equipment, tire, battery, oil, antifreeze and automotive accessory, guns and ammunition, bedding, linens, curtains and draperies, cameras, calculators and telephone, computer hardware, software and accessories, bicycle and bicycle accessories, automotive maintenance and repair supplies and equipment, pet equipment and supplies, giftshop, housewares and tableware, radio, television and sound equipment, video recorders, video tape and video game, tool and hardware, fishing, boating, camping and hunting equipment, garden, lawn and patio equipment and supplies, stationery, office and school supplies, small electrical appliances, electrical and plumbing maintenance and repair supplies and equipment, bakery goods, picture frames and mirrors, and Christmas trees, ornaments, decorations, lights and accessories; none of the aforesaid services being vocational consultancy services.
TARGET ICs.: 25, 28 and 35 (see below) 2733228 (CTM) September 20, 2010 (Filed June 13, 2002)
IC 025: Articles of clothing; articles of underclothing; nightwear; swimwear; footwear; hosiery; headwear.
IC 028: Toys, games and playthings; action figures; dolls and accessories for dolls, including dolls' clothes, dolls' feeding bottles and dolls' houses; marionettes and puppets; teddy bears; mobiles; kites; rocking horses; rattles; toy masks; bath toys; board games; parlour games; building blocks; dice and cups for dice; marbles; conjuring apparatus; toy vehicles; toy scooters; scale model vehicles; toys for domestic pets; twirling batons; electric games and playthings (other than those adapted for use with television); electronic remote controlled toys; hand held computer games; hand held electronic games; amusement apparatus and machines being automatic and/or coin or counter operated; amusement apparatus for use in arcades; amusement apparatus and machines incorporating television screens and/or sound recording facilities; coin-operated games; Christmas trees made of synthetic materials; Christmas tree stands; decorations for Christmas trees; Christmas crackers; novelties for parties; sporting and gymnastic apparatus; balls, bats and racquets; hockey sticks; golf clubs; billiard tables, balls and cues; body building and training apparatus; dumb bells; stationary exercise bicycles; gloves for sporting purposes, including golf gloves and boxing gloves; protective padding, elbow guards and knee guards; sleighs, bobsleighs, skis, skates and parts and fittings for such goods; waterskis and surf boards; skateboards; paragliders; hang gliders; climbers' harnesses; fencing weapons, masks and gauntlets: fishing rods, fishing reeds, fishing tackle and fish hooks; tables for indoor football; swimming pools; swimming flippers; swimming floats; swings and slides; skittles, quoits and ninepins.
IC 035: Retail services; retail services of a department store specialising in goods such as cosmetics, beauty care products, electronic goods, white goods, lighting, jewellery, stationery, bags and luggage, furniture, household utensils, clothes, carpets and rugs, and toys, games and playthings; sale of goods on-line or via the Internet; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail store; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise catalogue, insert media leaflets and publications, off-the-page advertisements, or from a general Internet website; the bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods in a wholesales outlet; the bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications; receiving orders for goods and forwarding such orders to be fulfilled by specific shops or outlets in the vicinity of the recipient; merchandising, namely the placement of assortments of goods for sales promotion purposes, and the ordering of assortments of goods, in all forms of trading; on-line e-commerce provider services, namely the presentation of goods, order placement and delivery services, and invoice management; arranging and concluding commercial transactions for others via on-line shops; telephone and/or computerised order placement for tele-shopping, for others; sales promotion by means of customer loyalty services; customer loyalty services whether or not with the use of a card; advertising services and the distribution of leaflets and samples; organisation of exhibitions for commercial or advertising purposes; marketing operations, studies and research; public relations; franchising services; none of the aforesaid services being market research services.
MERONA IC 025. US 022 039. G & S: women's hosiery. FIRST USE: 19910400. FIRST USE IN COMMERCE: 19910400 2685944 (US) 11-Feb-2003 (Filed 28-Jan-2002)
MERONA IC 025. US 022 039. G & S: Clothing, namely, men's underwear, loungewear, sleepwear, and socks, and women's socks. FIRST USE: 20000201. FIRST USE IN COMMERCE: 20000201 2677625 (US) 21-Jan-2003 (Filed 22-Mar-2002)
MERONA IC 018. US 001 002 003 022 041. G & S: Handbags and wallets. FIRST USE: 20040601. FIRST USE IN COMMERCE: 20040601
IC 025. US 022 039. G & S: Clothing, namely, pants, shirts, tops, sweaters, skirts, shorts, dresses, T-shirts, underwear, socks, swimwear, jackets, coats, blazers, belts, boots, shoes, and sandals. FIRST USE: 20000201. FIRST USE IN COMMERCE: 20000201 2896145 (US) 19-Oct-2004 (Filed 22-Mar-2002)
MERONA ICs 03, 09, and 026 (see below) 8165656 (CTM) 24-Dec-2009 (Filed 19-Mar-2009)
IC 03: Cosmetics; personal care products, namely, perfume, cologne, fragrances, aftershave gels, aftershave lotion, antiperspirant, skin and face astringents, bath beads, bath flakes, bath oil, bath salts, bath foam, body glitter, body mist, body oil, body lotion, body scrub, body wash, bubble bath, cologne, body cream, face cream, essential oils for personal use, exfoliating preparations for the skin, eye gels, eye masks, face masks, face scrub, non-medicated foot soaks, face toners, fragrant body splash, fragrant body mist, hair conditioner, hair glitter, hair rinses, hair conditioners, hair shampoo, hair spray, hair styling gel, hair styling mousse, hand lotion, face lotion, lip balm, massage cream, massage lotion, massage oil, nail polish, nail polish remover, non-medicated face cleanser, oil blotting sheets for the skin, body powder, shaving cream, shaving gel, shower cream, shower gel, skin bronzing cream, body soap, face soap, hand soap, sun block for the body, sun block for the face, suntan lotion for the body, suntan lotion for the face, sunless tanning lotion, talcum powder; potpourri, incense, sachets; cosmetics namely, lotions, creams, powders, pomade, fade creams, soaps, toners, astringents, cleaners for face and body.
IC 09: Sunglasses.
IC 026: Hair accessories and hair ornaments, namely, elastic hair and ponytail holders, hair clips, hair bands, hair bows, hair chopsticks, hair ribbons, claw clips, snap clips, twisters, hair clamps, bobby pins, barrettes, and combs for use as hair ornaments.
MERONA IC 14: Jewellery; watches.
IC 18: Handbags and wallets.
IC 25: Clothing, namely, pants, shirts, tops, sweaters, skirts, shorts, dresses, T-shirts, underwear, socks, swimwear, jackets, coats, blazers, belts, boots, shoes, and sandals; men's underwear, loungewear, sleepwear; and women's hosiery. 8165681 (CTM) 24-Dec-2009 (Filed 19-Mar-2009)
Respondent’s registration of the Disputed Domains violates the Policy.
The Disputed Domains are identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s Disputed Domains are confusingly similar, on their face, to one or more of Complainant’s registered TARGET and MERONA trademarks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between the Complainant’s Marks and Respondent by Respondent’s use of the Disputed Domains.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. For example, in DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id. See also, Christie’s Inc. v. Target’s Jewelry Auction, Inc., WIPO Case No. D2001-0075 (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its websites by using an identical or confusingly similar copy of the Complainant’s TARGET or MERONA Marks, thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers discover they are not at one of Complainant’s sites, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the websites of the Disputred Domains. As in Athanasios, Respondent here uses the TARGET and MERONA Marks in the title and body of its respective websites. It only makes sense that if searchers see the Marks listed in the body of the Disputed Domains’ web pages and the TARGET or MERONA Marks, searchers will be confused and led to believe that, even if the goods and services are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the Disputed Domains Domain Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the Disputed Domains. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Through the use of classic pay-per-click websites, Respondent’s domain names divert Complainant’s customers and potential customers to Respondent’s pay-per-click websites and then to other websites which are not associated with Complainant and, in some cases, are associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Respondent is not commonly known by the Disputed Domains domain or the names TARGET or MERONA and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by any of Complainant’s Marks, nor does Respondent operate a business or other organization under such marks or names and does not own any trademark or service mark rights in these names. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the Disputed Domains without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the Disputed Domains to confuse and misleadingly divert consumers, or to tarnish the Marks of the Complainant. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s various goods and services, who found the Disputed Domains domain, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. Such use cannot be considered fair. See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.”)
Lastly, Respondent’s use has tarnished and diluted the TARGET and MERONA Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by the Complainant by using the Marks in association with directory sites which provide links to numerous products and services not associated with or related to the Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services linked to directory sites over which Complainant has no quality control.
(c) Respondent Registered The Disputed Domains Domain In Bad Faith Under Policy ¶4(a)(iii). 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. See Policy ¶4(b)(iv).
Respondent intentionally used the TARGET and MERONA Marks without consent from Complainant. Respondent was put on both actual and constructive notice of Complainant’s rights in its Marks through Complainant’s extensive prior use of the Marks as well as its various trademark registrations, which long predate the creation date of the Disputed Domains domain. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the TARGET and MERONA Marks in violation of Complainant’s rights in its Marks. Moreover, the content on Respondent’s websites at the Disputed Domains reveals that Respondent has actual knowledge of the Marks and Complainant’s goods associated with each and is purposefully trading on the Marks.
Respondent is obtaining commercial gain from its use of the websites at the Disputed Domains. These are directory or “pay-per-click” websites providing listings of hyperlinks, some of which lead to Complainant’s websites and some to the websites of Complainant’s competitors. Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the website of the Disputed Domains. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to these directory sites. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, D2007-1211 (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein the respondent registered the domain name <allaincebernstein.com>, which was indisputably identical to the complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial website via these links and found that the respondent’s use was for commercial gain and was in bad faith under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, D2007-1211. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its operation of pay-per-click sites under the Disputed Domains alone constitutes commercial gain. See AllianceBernstein, D2008-1230. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain names and websites results in a commercial gain for others by placing links to competitors of Complainant and other individuals, groups or entities on its websites. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the web pages of the Disputed Domains. Respondent’s use of these domain names is commercial because the various companies linked to the directory sites of the Disputed Domains benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the Disputed Domains, Respondent is entirely and solely responsible for the content of its websites. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”
Further, it must be noted that the true Respondent hiding behind Whois privacy protection, an individual known as Yeonju Hong, is a well-known cybersquatter and is engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. At least 12 prior UDRP cases have been successfully brought against Cenal.com (the email which appears in Respondent’s whois information), including the following:
WIPO D2013-1868 sap-cloud.com SAP AG v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong Transfer 08-Jan-2014
WIPO D2013-0691 ventepriveecom.com Venteprivee.com Venteprivee.com IP S.à.r.l.
v. Whois Privacy Services Pty Ltd. / Dzone Inc., Yeonju Hong Transfer 12-Jun-2013
WIPO D2013-0629 netaporterdomain.com netaporterdomains.com netaporternic.com
The Net-A-Porter Group Limited v. Whois Privacy Services Pty Ltd Domain Hostmaster / Dzone Inc., Yeonju Hong Transfer 05-Jun-2013
WIPO D2013-0116 boehringerdomain.com boehringerdomains.com boehringernic.com
wwwboehringer.com Boehringer Ingelheim Pharma GmbH & Co. KG v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong Transfer 03-Mar-2013
WIPO D2012-2442 legohogwarts.com Lego Juris A/S v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong Transfer 08-Feb-2013
NAF 1478171 enterpriserentacarcoupons.com Enterprise Holdings, Inc v. Dzone Inc. / Yeonju Hong Transfer 30-Jan-2013
These prior decisions against Respondent are highly relevant to the present case in that they show the Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others. In Fandango, LLC v. DNS Manager / Cenal.com, NAF Claim No. 1418378 (2012), the Panel found “that Respondent’s registration of several trademark infringing domain names in the past is sufficient to render a finding of bad faith in the current instance under Policy ¶4(b)(ii).” Id. See also, Target Brands, Inc. v. Guowei Hai Gui, NAF Claim No. FA1102001371811 (2011) wherein it was held that “Respondent has been a party to [and lost] previous UDRP decisions … [and] [t]his is evidence that Respondent is a serial cyber-squatter, which in turn demonstrates that Respondent registered and uses the <directtvrebates.com> domain name in bad faith and thus violated the Policy; Time Warner Inc. v. mga enterprises limited, NAF Case No. 1426479 (2012) (Based on prior adverse UDRP decisions against respondent, “[t]he Panel finds that Respondent has engaged in a pattern of infringing domain name registrations indicating bad faith registration and use of the disputed domain names under Policy ¶4(b)(ii).”)
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the Disputed Domains in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 is the owner of the TARGET and MERONA marks and their corresponding logos. Complainant uses the marks in connection with retail department stores, men and women’s apparel, and related goods. Complainant was created in 1962 in Minneapolis, Minnesota as a division of the former Dayton Hudson Corporation, and Complainant is now one of the most famous brands in the field of retail department stores. Complainant owns numerous registrations with the United States Patent & Trademark Office (“USPTO”) for the TARGET mark (e.g., Reg. No. 818,410 registered Nov. 8, 1966) and the MERONA mark (e.g., Reg. No. 2,685,944 registered Feb. 11, 2003). A trademark registration is normally satisfactory evidence of rights under Policy ¶4(a)(i), regardless of whether the registration is in Respondents jurisdiction. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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, This Panel finds Complainant has satisfactorily proven its rights in the TARGET and MERONA marks pursuant to Policy ¶4(a)(i).
Complainant claims the <wwwtarget.org> and <targett.org> domain names are confusingly similar to the TARGET mark. Respondent adds either a single letter or the prefix “www” without the period that usually separates it from the second-level portion of a domain. Normally such changes are considered so minor the disputed domain names are held to be confusingly similar to a complainant’s marks. 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); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). Adding the gTLD “.org” is likewise insufficient to distinguish the disputed domain names from a complainant’s marks. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel concluded adding a gTLD (which is required by domain name syntax) to a domain name is irrelevant to a Policy ¶4(a)(i) analysis. In light of the evidence presented, Respondent’s <wwwtarget.org> and <targett.org> domain names are confusingly similar to the TARGET mark under Policy ¶4(a)(i).
Complainant claims the <merona.org> domain name is identical to the MERONA mark. Respondent does nothing more than add the gTLD “.org” to the MERONA mark to create the disputed domain name. Using the analysis from above, it seems clear the disputed domain name is confusingly similar to Complainant’s mark. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). This Panel holds the <merona.org> domain name is identical to the MERONA mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the <wwwtarget.org>, <targett.org>, and <merona.org> domain names. Complainant notes Respondent does not operate a business in connection with the names and does not own any trademark rights in these names. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record. The WHOIS record for the disputed domain names lists “Domain Hostmaster, CustomerID: 86519751347977,33528701558664,67451560378250 / Whois Privacy Services Pty Ltd” as the domain name registrant. Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent actually acquired the disputed domain names on December 15, 2009 and January 16, 2010, well after their formal creation dates as noted in the WHOIS record. Respondent pointed the disputed domain names to websites operating classic pay-per-click links, diverting Internet users to competing and noncompeting websites. Using confusingly similar domain names to host competing links is evidence of a lack of rights and legitimate interests in a domain name. 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)). Based upon this evidence, Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii).
Finally, Respondent registered the disputed domain names using a privacy service. This means the real party in interest has not publicly associated its name with the disputed domain name. The bare trustee has no interest in the disputed domain names. Therefore, neither of them can claim to have acquired any rights to the disputed domain names in a commercial context.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is hiding behind WHOIS privacy protection but is an individual known as Yeonju Hong, a “well-known cybersquatter” and is engaged in a “long-standing pattern of bad faith registrations of domain names.” According to Complainant, at least 12 prior UDRP cases have been successfully brought against Respondent. This based upon the e-mail which appears in Respondent’s WHOIS information. See SAP AG v.Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong, D2013-1868 (WIPO Jan. 8, 2014); see also Lego Juris A/S v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong, D2012-2442 (WIPO Feb. 8, 2013); see also Enterprise Holdings, Inc. v. Dzone Inc. / Yeonju Hong, FA 1478171 (Nat. Arb. Forum Jan. 30, 2013). Complainant believes these cases constitute a demonstration of a developed pattern of registering domain names in bad faith.
This requires a bit of discussion. The fact Respondent has lost multiple URDP cases does not mean Respondent is ipso facto required to lose this case. The fact Respondent has registered multiple infringing domain names does not mean Respondent registered and uses these disputed domain names in bad faith unless Complainant is precluded from reflecting its marks in a domain name. The evidence is to the contrary because Complainant owes and operates Target.com and Merona.com.
However, the fact Respondent registered the disputed domain names raises the rebuttable presumption of bad faith registration and use in the commercial context REGARDLESS OF WHO IS THE BENEFICIAL OWNER. Respondent has not presented any evidence to rebut this presumption. This fact alone is sufficient to support a finding of bad faith registration and use.
Complainant claims Respondent intentionally uses Complainant’s marks in the domain names to divert Complainant’s current and potential consumers to Respondent’s own website providing a list of pay-per-click links. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel concluded that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii). Respondent’s registration and use of the <wwwtarget.org>, <targett.org>, and <merona.org> domain names fit this fact pattern and constitute a product of bad faith under Policy ¶4(b)(iii).
Respondent commercially gains from its use of the websites at the disputed domain names. The pay-per-click websites providing listings of hyperlinks, some of which lead to Complainant’s competitors, provide Respondent with compensation each time an Internet users clicks on one of these links (or at least free domain name parking). Respondent is attempting to take commercial advantage of Internet users’ mistakes that result from a likelihood of confusion created by Respondent between the <wwwtarget.org>, <targett.org>, and <merona.org> domain names and Complainant’s marks under Policy ¶4(b)(iv). 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <wwwtarget.org>, <targett.org>, and <merona.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 5, 2014
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