Target Brands, Inc. v. Peter Carrington
a/k/a Party Night Inc.
Claim
Number: FA0306000161276
Complainant is Target Brands, Inc., Minneapolis, MN,
USA (“Complainant”) represented by Eunice
P. de Carvalho, of Faegre & Benson LLP. Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam,
NETHERLANDS (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetdvd.com>, registered with Key-Systems
Gmbh d/b/a Domaindiscount24.Com.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 30, 2003; the Forum received a hard copy of the Complaint
on June 2, 2003.
On
June 5, 2003, Key-Systems Gmbh d/b/a Domaindiscount24.Com confirmed by e-mail
to the Forum that the domain name <targetdvd.com> is registered
with Key-Systems Gmbh d/b/a Domaindiscount24.Com and that Respondent is the
current registrant of the name. Key-Systems Gmbh d/b/a Domaindiscount24.Com has
verified that Respondent is bound by the Key-Systems Gmbh d/b/a Domaindiscount24.Com
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
June 5, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 25, 2003 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@targetdvd.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 2, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental
Rules and any rules and principles of law that the Panel deems applicable,
without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <targetdvd.com>
domain name is confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or
legitimate interests in the <targetdvd.com> domain name.
3. Respondent registered and used the <targetdvd.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant uses
the TARGET mark in relation to its retail discount department stores. Complainant holds several trademark
registrations with the U.S. Patent and Trademark Office for the well-known
TARGET mark including Reg. Nos. 845,193 (registered February 27, 1968).
Complainant also
operates an informational and on-line shopping site at <target.com> that
markets the same products as its retail discount department stores.
Respondent
registered the disputed domain name on November 18, 2002. Respondent is using the disputed domain name
to redirect Internet traffic to <hanky-panky-college.com>, an adult
oriented website.
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.
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.
Complainant has
established that it has rights in the TARGET mark through registration with the
U.S. Patent and Trademark Office and through use of the mark in commerce.
Respondent’s <targetdvd.com>
domain name is confusingly similar to Complainant’s TARGET mark because it
merely adds the generic acronym “dvd” to the end of the mark. Use of a generic acronym/words with
Complainant’s registered mark does not circumvent Complainant’s rights in the
mark nor avoid the confusing similarity element of Policy ¶ 4(a)(i). The Panel
determines that the acronym "dvd" relates to Complainant’s business
because Complainant is known to sell dvd’s at its discount department stores;
therefore, consumers are confused and misled when the acronym “dvd” is combined
with Complainant’s mark. See L.L. Bean, Inc. v. ShopStarNetwork,
FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic
word “shop” with the Complainant’s registered mark “llbean” does not circumvent
the Complainant’s rights in the mark nor avoid the confusing similarity aspect
of the ICANN Policy); see also Kelson
Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that
<kelsonmd.com> is identical or confusingly similar to Complainant’s
federally registered service mark, “Kelson”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
proven its rights in the TARGET mark and asserts that Respondent lacks valid
rights or legitimate interests in the disputed domain name because it
incorporates Complainant’s mark.
Respondent is
using the TARGET mark within its <targetdvd.com> domain name in
order to redirect Internet traffic to an adult oriented website. This use is neither a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii). See MatchNet
plc v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material, where such use is calculated to mislead consumers and tarnish the
Complainant’s mark); see also Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that infringing on another's well-known mark to provide a link to a
pornographic site is not a legitimate or fair use).
Furthermore,
there is no evidence on record that proves that Respondent is commonly known as
TARGETDVD or by the <targetdvd.com> domain name. Respondent is not affiliated with
Complainant and the evidence fails to establish that Respondent is authorized
or licensed to use domain names or marks containing the TARGET mark. Therefore, Respondent has no rights or
legitimate interests in the <targetdvd.com> domain name pursuant
to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been established.
Based on the
well-known nature of Complainant’s TARGET mark, it can be inferred that
Respondent had knowledge of Complainant’s TARGET mark when it registered the
disputed domain name. Registration of a
domain name, despite knowledge of Complainant’s rights, is evidence of bad
faith registration pursuant to Policy ¶ 4(a)(iii). See Ty Inc. v.
Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s
registration and use of an identical and/or confusingly similar domain name was
in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent
should have been aware of it); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31,
2001) (finding that, in light of the notoriety of Complainants' famous marks,
Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks
at the time she registered the disputed domain name and such knowledge
constituted bad faith).
Furthermore,
Respondent registered the <targetdvd.com> domain name, which
includes the TARGET mark, and linked it to an adult oriented website. The use of a domain name confusingly similar
to a registered mark to divert Internet traffic to a website with sexually
explicit content is itself evidence of bad faith pursuant to Policy ¶
4(a)(iii). See Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of bad faith registration and
use); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the
Respondent linked the domain name in question to websites displaying banner
advertisements and pornographic material).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <targetdvd.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 16, 2003
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