Target Brands, Inc. v. Nathan Lytlepinhey
Claim Number: FA1601001657101
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, United States. Respondent is Nathan Lytlepinhey (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cvstargetrx.com> and <cvspharmacytarget.com> (the “Disputed Domain Names”), registered with GoDaddy.com, LLC.
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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2016; the Forum received payment on January 25, 2016.
On January 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cvstargetrx.com> and <cvspharmacytarget.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2016 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@cvstargetrx.com, postmaster@cvspharmacytarget.com. Also on January 26, 2016, 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.
A timely Response was received and determined to be complete on February 16, 2016.
On February 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a publicly traded company (NYSE: TGT) that was “created” in 1962 and is “one of the most famous brands in the field of retail department stores,” with approximately 1,750 stores in the United States and revenue (in 2014) of $72.6 billion. Complainant further states that it announced on June 15, 2015, that “it had reached a deal with the well-known retail pharmacy and healthcare product company CVS Health (‘CVS’) by which CVS is to acquire the pharmacy and health clinic business which operates at Complainant’s retail store locations and online.”
The Disputed Domain Names were created on June 16, 2015 (<cvstargetrx.com>) and June 20, 2015 (<cvspharmacytarget.com>).
Complainant argues the following:
· Complainant is the owner of “many” trademark registrations that consist of or contain the mark TARGET (the “TARGET Trademark”), including U.S. Reg. Nos. 818,410 (registered November 8, 1966); 845,615 (registered March 5, 1968); and 845,193 (registered February 27, 1968). Complainant has provided evidence in support of the foregoing. The Disputed Domain Names are confusingly similar to the TARGET Trademark because they “incorporate exact copies” of the TARGET Trademark plus “generic or other words.” The addition of the CVS trademark to the Disputed Domain Names “does not alleviate confusion.”
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent’s <CVSTargetrx.com> domain originally redirected visitors to the Walgreens.com, a site of one of Complainant’s largest competitors in the retail healthcare and pharmacy industry” (although the redirection was removed after Complainant contacted Respondent about same); Respondent is using the Disputed Domain Names in connection with inactive web pages; “Respondent appears to be an individual named Nathan Lytlepinhey” and is not commonly known by either of the Disputed Domain Names; and “Respondent is using the domain names to confuse and misleadingly divert consumers, or to tarnish the” TARGET Trademarks.
· Respondent has registered and is using the Disputed Domain Name in bad faith because, inter alia, “Respondent was initially obtaining commercial gain from its use of the <CVSTargetrx.com> domain[] based upon the confusion it creates with the TARGET [Tradem]arks” because “[w]hen a visitor to that domain was redirected to the Walgreens.com page of Complainant’s competitor, Respondent received compensation from the such registrar” as the result of “’affiliate’ revenue based upon the number of hits the registrar’s website gets as a result of being redirected from the Disputed Domain”; and “inactive use of a disputed domain name may still violate Policy ¶ 4(b)(iv)” under the doctrine described in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003.
B. Respondent
Respondent states that the Disputed Domain Names “were registered for Central Valley Stars use” – “a local health support group and community co-operative.” Respondent further states that the Disputed Domain Names “are registered with the intention of use for non-profit community outreach [sic] programs, co-ops, and hollistic [sic] religious assistance.”
The Panel finds that the Disputed Domain Names are identical or confusingly similar to a trademark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and that Respondent registered and is using 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 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.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the TARGET Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the TARGET Trademark, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., “cvstargetrx” and “cvspharmacytarget”), as it is well-established that the top-level domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Given that the second-level portion of each of the Disputed Domain Names contains the TARGET Trademark, the Panel is initially inclined to find that they are confusingly similar to the TARGET Trademark. The addition of the words “rx” (an abbreviation for a doctor’s prescription) and “pharmacy” only enhance the confusing similarity, given that the addition of certain words, as here, can “exacerbate[ ] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[ ] the risk of confusion between the Domain Name and the…trademarks.” See Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”))). Here, because the words “rx" and “pharmacy” may be associated with Complainant’s trademark (as shown by the TARGET Trademark registrations cited above), these words increase the confusing similarity between the disputed domain name and Complainant’s trademarks. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Finally, the addition of the trademark “CVS” to each of the Disputed Domain Names also does nothing to alleviate any confusing similarity because “[w]hen a domain name contains two registered trademarks, such as here, that domain name is deemed confusingly similar to the trademarks at issue.” See Volkswagen AG v. Aditya Roshni, c/o Web Services Party, WIPO Case No. D2013-0635. See also Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited et al., WIPO Case No. D2008-1675 (“[t]he fact that one of [the disputed domain names] incorporates a trade mark of another entity does not on the facts of this case make any difference to the assessment”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent’s <CVSTargetrx.com> domain originally redirected visitors to the Walgreens.com, a site of one of Complainant’s largest competitors in the retail healthcare and pharmacy industry” (although the redirection was removed after Complainant contacted Respondent about same); Respondent is using the Disputed Domain Names in connection with inactive web pages; “Respondent appears to be an individual named Nathan Lytlepinhey” and is not commonly known by either of the Disputed Domain Names; and “Respondent is using the domain names to confuse and misleadingly divert consumers, or to tarnish the” TARGET Trademarks.
Under the UDRP, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. Here, although Respondent has submitted a response, it effectively contains only six sentences of any relevance, does not substantively address the merits of Complainant’s legal arguments and offers no “appropriate allegations or evidence.” Indeed, the Response contains no evidence.
Accordingly, the Panel is satisfied that Complainant has proven the second element of the UDRP.
Complainant states that the Disputed Domain Names are not currently being used in connection with active websites. Under some circumstances, such passive holding of a domain name can establish a lack of rights or legitimate interests. As set forth in the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the following circumstances are evidence of bad faith where a respondent is passively holding a domain name:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in [multiple] countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Here, the TARGET Trademark appears to have a strong reputation and is widely known, given the length of time it has been use and the fact that it is protected by multiple trademark registrations, as well as the large scope of Complainant’s business; Respondent’s only assertion of a good faith use (that the Disputed Domain Names were for use in connection with the “Central Valley Stars” – an unsupported allegation) is, in the context of the facts of this case, unbelievable; and, considering the Disputed Domain Names in their entirety, it is not possible to conceive of any plausible actual or contemplated active use by the Respondent that would not be illegitimate.
Although Respondent has stated that the Disputed Domain Names “were registered for Central Valley Stars use” – an apparent reference to the acronym “CVS” – Respondent has offered no evidence in support thereof, including the existence of any entity or organization using such a name. Nor has Respondent offered any explanation as to why the Disputed Domain Names would also contain the words “rx,” “pharmacy” or “target.” Therefore, Respondent’s explanation appears to be “an after-the-fact pretext intended only to justify misuse of Complainant’s mark.” National Organization for the Reform of Marijuana Laws v. Industry Internet, LLC, WIPO Case No. D2002-0938. See also National Hockey League v. Daniel Krusz, WIPO Case No. D2001-0234, where the panel stated that it “agrees with the Complainant that the Respondent’s attempts… to pose as a New Hampshire tourism site were ‘pretextual’.” In that case, the respondent used the domain name <nhlcoolshots.com> in connection with a website showing “pictures of New Hampshire lakes” – a pretext for using in bad faith the complainant’s NHL COOL SHOTS trademark (used by complainant in connection with a television series on National Hockey League games). Respondent’s explanation is rendered even more unbelievable given that one of the Disputed Domain Names previously redirected visitors to a website for Walgreens, a competitor of Complainant – a use that in and of itself would create a likelihood of confusion under paragraph 4(b)(iv) of the UDRP.
Finally,
that the Disputed Domain Names were registered within days of Complainant’s
announcement of its deal with CVS Health (as described above), is evidence that
Respondent was “opportunistically engaged in bad faith registration.” Thermo
Electron Corp. and Fisher Scientific Co. LLC and Fisher Scientific Int’l Inc.
v. Charlie Xu, NAF Claim No. 0713851. See also Amazon.com, Inc., Amazon
Technologies, Inc. v. Paul James, WIPO Case No. D2014-1847 (“a close time
correlation” between the registration date of disputed domain names and a
related announcement by a complainant “cannot reasonably be considered to be
coincidental or serendipitous”).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cvstargetrx.com> and <cvspharmacytarget.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: February 29, 2016
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