Target Brands, Inc. v. Above.com Domain Privacy
Claim Number: FA1701001714218
Complainant is Target Brands, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ltarget.com>, <tafget.com>, <targdt.com>, <targeg.com>, <targetg.com>, <targetl.com>, <tzrget.com>, and <wtarget.com>, registered with Above.com Pty Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2017; the Forum received payment on January 25, 2017.
On Jan 31, 2017, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <ltarget.com>, <tafget.com>, <targdt.com>, <targeg.com>, <targetg.com>, <targetl.com>, <tzrget.com>, and <wtarget.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.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 February 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2017 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@ltarget.com, postmaster@tafget.com, postmaster@targdt.com, postmaster@targeg.com, postmaster@targetg.com, postmaster@targetl.com, postmaster@tzrget.com, postmaster@wtarget.com. Also on February 1, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant registered the TARGET (e.g., Reg. No. 845,193, registered July 24, 1967) mark with the United States Patent and Trademark Office (“USPTO”) and various other governmental agencies, including Respondent’s home country, Australia. See Compl., at Attached Ex. E. Respondent’s Disputed Domain Names are confusingly similar as they either misspell the TARGET mark, or they fully incorporate the TARGET mark and add one letter either before or after the mark. All of the Disputed Domain Names also incorporate the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in any of the Disputed Domain Names. Respondent is not commonly known by the TARGET mark, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in any domain name. Respondent failed to respond to Complainant’s attempts to resolve the dispute, and failed to respond to the Complaint. Respondent does not use the Disputed Domain Names for any bona fide offering of goods or services because the domain names direct the user to generic websites with generic links to third-party websites in direct competition with Complainant, presumably receiving pay-per-click fees. See Compl. at Attached Ex. H.
Respondent registered and uses the Disputed Domain Names in bad faith. Respondent uses the Disputed Domain Names to generate revenue as click through websites, redirecting users to websites in direct competition with Complainant. Id. Respondent takes advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially benefit. Additionally, by offering links to third party websites in direct competition to Complainant, Respondent disrupts Complainant’s business. Further, Respondent engages in typosquatting behavior with the Disputed Domain Names by changing one letter or adding one letter to the TARGET mark. Finally, Respondent’s use of apparently falsified or incomplete WHOIS contact information demonstrates a desire to avoid being held accountable.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent discount retailer that provides a variety of merchandise at affordable prices.
2. Complainant registered the TARGET mark (e.g., Reg. No. 845,193, registered July 24, 1967) with the United States Patent and Trademark Office (“USPTO”) and various other governmental agencies, including Respondent’s home country, Australia.
3. Respondent registered the disputed domain names on the following dates: <ltarget.com> (Feb. 3, 2003), <tafget.com> (Feb. 17, 2013), <targdt.com> (Feb. 17, 2012), <targeg.com> (Feb. 17, 2013), <targetg.com> (Feb. 3, 2003), <targetl.com> (Dec. 17, 2001), <tzrget.com> (Feb. 17, 2013), and <wtarget.com> (Feb. 3, 2003).
4. The domain names direct the user to generic websites with generic links to third-party websites in direct competition with Complainant, presumably for pay-per-click fees.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is an upscale discount retailer that provides a variety of merchandise at affordable prices. Complainant’s first store opened in 1962 and has since grown to be the second largest retailer in the United States, with over 1,700 stores located in 49 states. Complainant claims it registered the TARGET (e.g., Reg. No. 845,193, registered July 24, 1967) mark with the USPTO. See Compl., at Attached Ex. E. Panels have consistently held that registration of a mark with the USPTO sufficiently establishes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel may see that Complainant has established rights in the TARGET mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s TARGET mark. Complainant argues that Respondent’s Disputed Domain Names are confusingly similar as they only differ by the substitution or addition of one letter, and the addition of the gTLD “.com”. Similar changes have not been found distinguishing by past Panels. See Intelius, Inc. v. Hyn, FA 703175 (Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar); see also TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”). Similarly, Panels have held that adding the gTLD “.com” does not constitute a sufficient difference. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainants FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). In creating the domain names, Respondent changed the TARGET mark by substituting a single letter with a different letter or the addition of a single letter, and adding the gTLD “.com”. Therefore, the Panel finds that Respondent has not included elements in the Disputed Domain Names that would provide sufficient distinction from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel may see that Complainant has established rights in the TARGET mark for the purposes of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TARGET trademark and to use it in its domain names, making only minor spelling alterations;
(b) Respondent has then used the disputed domain names to direct the user to generic websites with generic links to third-party websites in direct competition with Complainant, presumably for pay-per-click fees;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Above.com Domain Privacy” as the registrant. See Compl., at Attached Ex. I. Complainant asserts that there is no evidence Respondent has ever been legitimately known by the TARGET mark. These submissions have been used as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by any of the Disputed Domain Names prior to their registration, and Complainant has not given Respondent permission to use the TARGET mark. Accordingly, the Panel finds that Respondent is not commonly known by any of the Disputed Domain Names under Policy ¶ 4(c)(ii);
(e) Complainant next claims that Respondent failed to respond to Complainant’s correspondence. A lack of a response has been used to demonstrate a lack of legitimate interest in similar disputes. See Am. Express Co. v. Fang Suhendro, FA 129120 (Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Complainant contends that it contacted Respondent via email to attempt to resolve the dispute without any response, and Respondent similarly failed to respond to the complaint filed by Complainant. The Panel agrees with Complainant and finds that Respondent has no rights or legitimate interests in the Disputed Domain Names;
(f) Complainant further submits that Respondent’s actions are not a bona fide offering of goods or services because Respondent, likely to garner pay-per-click fees, directs users to websites in direct competition with Complainant. Prior Panels have concluded that this conduct demonstrates lack of a bona fide offering of goods or services. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Complainant submits that the Disputed Domain Names direct users to generic websites with generic links to third-party websites in direct competition with Complainant, including <eBay.com> and <amazoneshop.com>. See Compl. at Attached Ex. H. Respondent presumably does this to receive pay-per-click fees. The Panel agrees that Respondent’s actions are not a bona fide offering of goods or services.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent uses the Disputed Domain Names to benefit commercially as click through websites, redirecting users to websites in direct competition with Complainant. Prior Panels have found this behavior to constitute bad faith. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant, as claimed earlier, shows that Respondent offers links to competitors on the Disputed Domain Names in attempts to benefit commercially from click through websites. See Compl. at Attached Ex. H. The Panel therefore finds that Respondent attempted to benefit commercially and was acting in bad faith.
Secondly, Complainant submits that Respondent takes advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and disrupt Complainant’s business. Using a domain name to offer hyperlinks resolving in websites in direct competition with a complainant’s services has been accepted as evidence of disrupting a business. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Complainant claims that Respondent attempts to benefit from the infamous TARGET mark and disrupt its business by diverting customers attempting to access Complainant’s services to alternative competing websites. The Panel agrees with Complainant and finds that Respondent acted in bad faith.
Thirdly, Complainant contends that Respondent engages in typosquatting behavior by changing one letter with an adjacent letter, or adding one letter to the full mark. A finding for typosquatting can show bad faith. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant states that Respondent attempts to benefit from common typing mistakes made by users by either changing or adding one letter in its TARGET mark. Thus, the Panel finds evidence of typosquatting, constituting bad faith.
Fourthly, Complainant alleges that Respondent attempts to hide its identity by utilizing a privacy service. Evidence of concealing a registrant’s identity can demonstrate bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., D2004-0453 (WIPO Aug. 25. 2004) (holding that the respondent’s efforts to disguise its true identity by using the privacy protection feature of the Registrar was an example of bad faith conduct). Complainant submits that Respondent conceals its identity, presumably to avoid being held accountable. The Panel finds that Respondent’s efforts to conceal its identity constitutes bad faith registration under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the TARGET mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ltarget.com>, <tafget.com>, <targdt.com>, <targeg.com>, <targetg.com>, <targetl.com>, <tzrget.com>, and <wtarget.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 1, 2017
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