Target Brands, Inc. v. Hosting Provider
Service
Claim
Number: FA0308000187396
Complainant is Target Brands, Inc., Minneapolis, MN
(“Complainant”) represented by Jodi A.
DeSchane, of Faegre & Benson LLP. Respondent is Hosting Provider Service, Tocumen, Panama (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetpills.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially and
to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 18, 2003; the Forum received a hard copy of the
Complaint on August 19, 2003.
On
August 18, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <targetpills.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. 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
August 20, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 9, 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@targetpills.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
September 19, 203, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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 transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <targetpills.com>
domain name is confusingly similar to Complainant’s registered TARGET mark.
2. Respondent does not have any rights or
legitimate interests in the <targetpills.com> domain name.
3. Respondent registered and used the <targetpills.com>
domain name in bad faith.
B. Respondent did not submit a Response in this
proceeding.
Complainant
Target Brands, Inc., through its licensee Target Corporation, has operated a
chain of TARGET retail discount department stores since 1962. Currently, Complainant operates over 1,100
stores in 47 states. In addition to
offering traditional discount department store merchandise, Complainant’s
stores also offer pharmacy services.
Complainant operates a shopping website at <target.com>.
Used in
association with its retail department stores and related services, Complainant
holds a registered service mark in TARGET, which was registered on the
Principal Register of the United States Patent and Trademark Office on February
27, 1968 as Reg. No. 845,193.
Complainant also holds a service mark in the word TARGET with the
“bullseye” design, registered as number 1,386,318 on March 11, 1986.
Respondent
registered the <targetpills.com> domain name on August 22, 2002,
and has used the domain name and associated website to sell prescription drugs
online. Sometime after May 21, 2003,
Respondent deactivated the website at the <targetpills.com> domain
name, although Complainant reports that it is still possible to access
Respondent’s services through pages hosted at other domain names.
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 its rights in the TARGET marks through registration and continuous
use of the marks in commerce. The <targetpills.com>
domain name incorporates Complainant’s entire registered TARGET mark and adds
the word “pills,” a term that is closely related to Complainant’s pharmacy
operations. Accordingly, the Panel
finds the <targetpills.com> domain name to be confusingly similar
to Complainant’s TARGET marks. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain name
for the purpose of determining whether it is identical or confusingly similar).
Policy ¶ 4(a)(i)
has been satisfied.
Complainant has
asserted, with supporting evidence, that Respondent has no rights or legitimate
interests in respect of the disputed domain name. In light of Respondent’s failure to respond to Complainant’s
assertion, the Panel may presume Respondent has no such rights or interests in
the domain name. See 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”); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Furthermore,
Complainant’s evidence demonstrates that Respondent’s purpose in using the <targetpills.com>
domain name has been to drive traffic to its online pharmacy website through
infringing use of Complainant’s TARGET mark.
Because Internet users may erroneously believe that Respondent’s site is
somehow affiliated with or operated by Complainant, such a use is not a bona
fide offering of goods or services, nor a legitimate noncommercial or fair use
of the domain name under Policy ¶ 4(c).
See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum
June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit
pharmaceutical orders without a license or authorization from Complainant does
not constitute a bona fide offering of goods or services under Policy ¶
4(c)(i)); see also Ziegenfelder
Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests based on the fact that the
domain names bear no relationship to the business of Respondent and that
Respondent would only legitimately choose to use Complainant’s mark in a domain
name if Respondent was seeking to create an impression that the two businesses
were affiliated).
While Respondent
may have held itself out as TARGETPILLS.COM on its website at <targetpills.com>,
there is no evidence that Respondent was actually or commonly known by the
disputed domain name. Both the fact
that Respondent declined to respond to Complainant’s charge and the fact that
Respondent’s operations suddenly ceased suggest that Respondent was not
legitimately known as <targetpills.com>. Moreover, given the strength and fame of Complainant’s TARGET
mark, it would seem highly unlikely that Respondent could make a legitimate use
of the <targetpills.com> domain name without infringing on
Complainant’s rights. See Yoga
Works, Inc. v. Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not
commonly known by the <shantiyogaworks.com> domain name, despite
listing its name as “Shanti Yoga Works” in its WHOIS contact information,
because there was “no affirmative evidence
before the Panel that Respondent was ever ‘commonly known by’ the disputed
domain name prior to its registration of the disputed domain name”); see
also Nike, Inc. v. B. B. de
Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate
interests where one “would be hard pressed to find a person who may show a
right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark); see also Neiman Marcus Group, Inc. v.
Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting, where
Respondent’s WHOIS information identified Respondent as “Neiman-Marcus,” that “Complainant has established itself as the
sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
asserts that Respondent’s use of the <targetpills.com> domain name
to sell prescription drugs in competition with Complainant evidences bad faith
as defined in Policy ¶ 4(b)(iii). While
the record does not make clear whether Complainant dispenses prescription drugs
online, Complainant’s <target.com> website does offer some prescription
services and information about Complainant’s pharmacies. Thus, customers of Complainant’s, who seek
information online from Complainant, may be misleadingly diverted to
Respondent’s site. Such use of a domain
name to disrupt the business of a competitor demonstrates bad faith registration
and use within the meaning of Policy ¶ 4(b)(iii). See Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between Complainant and
Respondent, Respondent likely registered the contested domain name with the intent
to disrupt Complainant's business and create user confusion); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15,
2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites).
Because of the
great degree of fame built up in Complainant’s TARGET marks, the same
circumstances which establish bad faith registration and use under Policy ¶
4(b)(iii) apply with equal force to establish bad faith under Policy ¶
4(b)(iv). See Computerized Sec.
Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(finding that Respondent’s use of the <saflock.com> domain name to offer
goods competing with Complainant’s illustrates Respondent’s bad faith
registration and use of the domain name pursuant to Policy 4(b)(iv)); see
also TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant).
Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <targetpills.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
September 30, 2003
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