Target Brands, Inc. v. ALDnet Media Group
and Edward Harrison
Claim Number: FA0401000227647
PARTIES
Complainant
is Target Brands, Inc.
(“Complainant”), represented by Jodi A.
DeSchane, of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh
St., Minneapolis, MN 55402.
Respondents are ALDnet Media
Group and Edward Harrison (collectively,
“Respondent”), represented by Dean Boland
of 3723 Pearl Road, Cleveland, OH 44109.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetwholesale.com>,
registered with Register.com.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelist in
this proceeding.
Honorable
Gilbert Thornton Cave, Honorable Bruce Meyerson and Houston Putnam Lowry
(Chartered Arbitrator) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 16, 2004; the Forum received a hard copy of the
Complaint on January 20, 2004.
On
January 20, 2004, Register.com confirmed by e-mail to the Forum that the domain
name <targetwholesale.com> is
registered with Register.com and that the Respondents are the current
registrant of the name. Register.com
has verified that Respondents are bound by the Register.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
February 2, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 23, 2004 by which Respondents could file a Response to the
Complaint, was transmitted to Respondents via e-mail, post and fax, to all
entities and persons listed on Respondents’ registration as technical,
administrative and billing contacts, and to postmaster@targetwholesale.com by
e-mail.
A
timely Response was received and determined to be complete on February 23, 2004.
A
reply was received from Complainant on or about March 1, 2004.
On March 11, 2004, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Honorable
Gilbert Thornton Cave, Judge Bruce Meyerson and Houston Putnam Lowry (Chartered
Arbitrator) as Panelist. Houston Putnam Lowry served as the chair.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. The
Target Stores division of Target Corporation (“Target”), a licensee of
Complainant, has since 1962 operated a chain of TARGET® retail discount
department stores, now numbering more than 1,100 stores in 47 states.
2. Over
the years, Target, TARGET® stores, and Target’s other commercial undertakings
have developed a national reputation for quality, and value. This well-deserved and hard-earned
reputation is reflected in the substantial and valuable body of goodwill
symbolized by the well-known TARGET mark.
3. The
TARGET mark is a commercial icon that has for many years been extensively used
and advertised. As a result, the TARGET mark enjoys an extremely high degree of
recognition with the public in the United States.
4.
In fact, in light of the distinctiveness of the mark, the duration and extent
of the use of the mark in connection with retail department store sales
services, the duration and extent of advertising and publicity of the mark, and
the high degree of recognition of the mark, the TARGET mark is a famous mark as
defined in 15 U.S.C. §1125(c).
5. Complainant
holds numerous valid United States registrations for the mark TARGET including
U.S. Trademark Registration No. 845,193, registered February 27, 1968, and for
the mark TARGET and the Bullseye design, U.S. Trademark Registration No.
1,386,318, both for use in connection with, among other things, retail
department store sales services.
6. Complainant
is also the owner of U.S. Trademark Serial No. 76/418,297 for the mark TARGET
and U.S. Trademark Serial No. 76/418,296 for the mark TARGET and the Bullseye
Design both for use in connection with on-line retail store services featuring
a wide variety of consumer goods, which have been in use in connection with the
on-line services since at least as early as 1998 and 1999 respectively.
7. Target
is active in electronic commerce, operating an informational and on-line
shopping site at <target.com>.
To connect with Target’s web site at TARGET.COM, an Internet user types
“www.target.com.” If the user has more
sophisticated software, the user may simply type “target.com,” the domain name
associated with Target’s web site.
8. As
a result of, among other things, Target’s continuous use and extensive
advertising promotion, including nationwide television campaigns, the TARGET
mark is known, among other places, throughout the United States as identifying
Complainant’s exclusive licensee as a source of quality retail services.
9. The
highly-distinctive TARGET mark is of great and incalculable value to
Complainant. Complainant closely
controls the use and reproduction of the TARGET mark to ensure that
all of Target Stores’ current and potential customers can rely upon the mark as
a symbol of high quality products and services.
Similarity of the Domain
Name to Complainant’s Trademarks
10. The
domain name <targetwholesale.com>
fully incorporates Complainant’s TARGET mark, and is nearly identical to
the name of Complainant’s exclusive licensee, Target Stores. Respondents’ domain name is otherwise
identical to Complainant’s TARGET mark except for the use of the generic word
“wholesale.” The use of the suffix
“wholesale” is an irrelevant distinction, which does not change the likelihood
of confusion. See Kabushiki Kaisha
Toshiba v. Distribution Purchasing & Logistics Corp., D2000-0464 (WIPO
July 27, 2000) (finding toshibastore.com
confusingly similar to the TOSHIBA mark); see also Arthur Guineess Son &
Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the Complainant combined with a generic word or term).
11. Given
the nearly identical nature of targetwholesale.com
to TARGET®, the domain name is confusingly similar to Complainant’s mark.
Absence of Trademark
Rights in Respondents
12. Upon
information and belief, Respondents have no trademark or intellectual property
rights in the domain name <targetwholesale.com>. Respondents are not, and have never been, a
licensee of Complainant or its predecessors in interest. At the time Respondents registered the
domain name, the TARGET mark was sufficiently distinctive or famous to give
constructive notice to Respondents that the registration of domain names at
issue would violate Complainant’s rights.
See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
April 17, 2000) (evidence of bad faith includes actual or constructive
knowledge of commonly known mark at time of registration); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
bad faith registration and use where it is “inconceivable that the Respondent
could make any active use of the disputed domain names without creating a false
impression of association with the Complainant”).
13. Upon
information and belief, Respondents are not commonly known as <targetwholesale.com>. See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in the domain name when
Respondent is not known by the mark).
14. Upon
information and belief, Respondents are not using the domain name in connection
with the bona fide offering of goods and services. When an Internet user inputs the domain name <targetwholesale.com>, the user
is immediately transferred to a website that features advertising for a variety
of goods including apparel, electronics, jewelry and toys – the same type of
goods available at TARGET® stores and available on-line at
<target.com>. Misdirecting
consumers through the use of Complainant’s mark does not qualify as a bona
fide offering of goods and services under Policy § 4(c)( i). See Ticketmaster Corp. v. DiscoverNet,
Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate
interests where Respondent generated commercial gain by intentionally and
misleadingly diverting users away from Complainant’s site to a competing
website); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA
96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use
of the domain name to confuse and divert Internet traffic is not a legitimate
use of the domain name).
15. Respondents
are not making any legitimate noncommercial or fair use of the domain name <targetwholesale.com>. See Alta Vista v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding that using the domain name to direct user to
other, unconnected websites does not constitute a legitimate interest in the
domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat.
Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks).
16. Under
these circumstances, Respondents lack any valid rights or legitimate interests
in the domain name.
Bad
Faith Registration and Use of Domain Name
17. Respondents
registered and used the domain name <targetwholesale.com> after the TARGET mark was already
distinctive and famous. Complainant has
not authorized or had control over Respondents’ use of the domain name <targetwholesale.com> or any
activities associated with the domain names.
18. Respondents
registered the domain name <targetwholesale.com> to divert Internet users to a website
featuring advertisements for goods in direct competition with Target’s
goods/services. Respondents are
capitalizing on the confusing similarity between <targetwholesale.com> and the TARGET®
mark to redirect users to their website.
Such actions constitute bad faith.
See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat.
Arb. Forum July 7, 2000) (finding bad faith where Respondent’s site pass users
through to Respondent’s competing business); see also Reuters Ltd. v.
Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the domain name).
19. Internet
users are misleading led to conclude that they are visiting a legitimate
website affiliated with Target and, once at the site, are offered links to
products of competitors of Target.
Respondents’ addition of a disclaimer on their website does not absolve
their bad faith registration and use of the domain name. See Alta Vista Co.
v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since
a disclaimer does not, and could not, accompany the domain name, then the
“domain name attracts the consumer’s initial interest and the consumer is
misdirected long before he/she has the opportunity to see the disclaimer”); see
also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001)
(justifying the conclusion that Respondent wishes to trade on the fame of
Complainant’s trademark, regardless of the presence of a small-print disclaimer
that is unavailable to Internet users until they have already entered the
gambling site, because the disclaimer fails to remedy initial confusion); see
also Ciccone v. Parisi, D-2000-0848 (WIPO Oct. 12, 2000) (finding that the
use of a disclaimer on Respondent’s website was insufficient to avoid a finding
of bad faith since the disclaimer might be ignored or misunderstood by Internet
users and a disclaimer did nothing to dispel initial interest confusion that
was inevitable from Respondent’s actions.); see also Avery Dennison Corp. v.
Wilkerson, FA 99593 (Nat. Arb. Forum Oct. 22, 2001) (finding that
Respondents were attempting to attract for commercial gain Internet users to
their website by creating a likelihood of confusion with the Complainant’s mark
as to the source, sponsorship, affiliation, or endorsement of the [Respondents’]
website despite the use of a disclaimer.
20. In
light of these circumstances, Respondents have registered and used the domain
name <targetwholesale.com> in
bad faith under Policy § 4(b).
21. Respondents’
bad faith registration and use of the domain name <targetwholesale.com> meet the
standards for transfer of the domain names to Complainant under the
Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C.A. §1125(d)(1)(A).
B.
Respondents
Complainant
argues that Respondents’ domain name <targetwholesale.com> “fully
incorporates Complainant’s TARGET mark, and is nearly identical to the name of
Complainant’s exclusive licensee, Target Stores.” Complainant has no intellectual property rights in the term
“target wholesale” or “targetwholesale.com.”
While Respondents concede that Complainant does have intellectual
property rights in their registered
trademark of the generic term “Target”, Complainant cannot cite any authority
for its attempt here to extend those rights to every domain name that includes
the generic term “target” including Respondents’ domain name. Complainant has chosen a trademark that
includes a generic and common word used throughout the English-speaking world
long before Complainant’s adoption of that word as its trademark. That choice by Complainant cannot act to
assist them in asserting dominion over the whole of domain names which include
the word target. It is akin to
permitting Complainant to assert rights in every other trademark that includes
the word “target.”
Complainant
argues that the use of the word “wholesale” in Respondents’ domain “is an
irrelevant distinction, which does not change the likelihood of
confusion.” See Kabushiki Kaisha
Toshiba v. Distribution Purchasing & Logistics Corp., D2000-0464 (WIPO
July 27, 2000) (finding <toshibastore.com>
confusingly similar to the TOSHIBA mark).
The citation to Toshiba,
however, is distinguishable from the facts in this matter.
The
trademark “Toshiba” is not a common and generic term as is Complainant’s
mark. Any domain name with the word
“Toshiba” immediately associates that address with the Toshiba company. There are thousands of sites (and registered
trademarks) that incorporate the generic word “target” over which Complainant
has no legitimate rights. If
Complainant’s confusion argument were legitimate, it forms the basis for the
de-registration of any domain name with the word target in it.
Complainant
asserts that Respondents’ domain name is “nearly identical” to its “Target”
mark. It is not.
First,
Internet users would have to input an additional nine distinct characters (in
addition to the six which comprise Complainant’s generic trademarked term
“Target”) in order to arrive at Respondents’ domain name. Complainant cannot seriously contest that
any Internet user would be so confused as to how to find <target.com>
that they would accidentally type in
the nine additional characters in <targetwholesale.com> in an
attempt to arrive at the Complainant’s home page. The two domain names are only similar because they share six
letters in common – the six letters that represent Complainant’s trademark – a
common word in the English language that predates Complainant’s intellectually
property rights in its mark by centuries.
Complainant
asserts that “Respondents have no trademark or intellectual property rights in
the domain name targetwholesale.com.” However, respondents have consistently been
using that domain name since its registration in 2002. They have maintained a web site at its
location since that time and tracked traffic to that location for business
purposes.
In
contrast, Complainant has not alleged that it did then, or does now, sell or
market wholesale products or, more to the point, operate a pay-per-click search
engine catering to wholesale product manufacturers and purchasers as
Respondents have for many years.
It
is Complainant who does not have any
trademark or intellectual property rights in the domain name and cannot
reasonably assert that it does.
Complainant has never used or registered “target wholesale” as a
mark. The word “targetwholesale” or
words “target wholesale” are not, in fact, a registered trademark in the United
States as of this writing. Complainant
does not allege in its Complaint that it is in the business of producing,
marketing or distributing any wholesale products. There are more than 2000 trademarks currently registered with the
United States Patent Office that include the generic term “target.”
For
example, consider the following trademarks, not owned by complainant, that
include the generic term “target.” All
of these registered trademarks have domain names associated with them that are
identical to their respective marks.
|
TARGET POINT |
|
|
Goods
and Services |
IC
028. US 022 023 038 050. G & S: GOLF BALLS |
|
Mark
Drawing Code |
(1)
TYPED DRAWING |
|
Serial
Number |
78315604 |
|
Filing
Date |
October
20, 2003 |
|
TARGETWARE |
|
|
Goods
and Services |
IC
009. US 021 023 026 036 038. G & S: Permission based software for
automating and enhancing marketing and sales. FIRST USE: 20010503. FIRST USE
IN COMMERCE: 20010927 |
|
Mark
Drawing Code |
(1)
TYPED DRAWING |
|
Serial
Number |
78281244 |
|
Filing
Date |
July
31, 2003 |
|
TARGETSITE |
|
|
Goods
and Services |
IC
035. US 100 101 102. G & S: Targetsite - Focused, high-impact websites
that are optimized to connect company content to a specific target audience,
pre-determined by interest or demographic. FIRST USE: 20020320. FIRST USE IN
COMMERCE: 20020320 |
|
Mark
Drawing Code |
(1)
TYPED DRAWING |
|
Serial
Number |
78255674 |
|
Filing
Date |
May
29, 2003 |
Complainant
also asserts that its TARGET trademark “was sufficiently distinctive or famous
to give constructive notice to Respondents that the registration of domain
names at issue would violate Complainant’s rights.” This argument is only valid if ICANN recognizes the right of the
Complainant to assert intellectually property rights over any domain name that
includes the generic word “target” including the domain names such as
<targetpoint.com>, <targetsite.com> and <targetware.com> that
are the above listed registered trademarks of entities other than
complainant.
Complainant
owns and operates a web site at <target.com> which, under their theory in
this complaint, would entitle them to seize the above domain names that are
entirely comprised of trademarked words or phrases Complainant does not
own. Also, Complainant’s retail stores
sell products including many that could be classified with the suffix “ware”
such as hardware, kitchenware, software etc.
Their theory in this matter would entitle them to seize control of
<targetware.com> on that basis as well.
Complainant cannot simply assert rights in every domain name containing
the generic term “Target” that it has chosen to use in connection with its
business.
The
reality of this complaint is simple, Complainant appears to desire to embark
upon a business involving the sale or distribution of wholesale products under
their trademarked name. Instead of attempting
to purchase a domain name that Respondents legally own and operate at market
value, they are using ICANN to substitute for a straw man in order to avoid
purchasing the domain name outright.
Respondents should not lose the hard work and effort they have poured into their business and
this domain name merely because Complainant now decides it wants to market
wholesale products.
For example, there is currently a company
named Target Software, unaffiliated with Complainant, marketing software at <targetsoftware.com>. Should this complaint be sustained,
Complainant will be able, at some random point in the future when it decides it
would like to market software under its brand, to seek to have this domain name
taken away from its current owner using the same arguments it uses here. A finding for Complainant here would put on
notice every other domain name using the generic term “target” they are in
danger of losing their hard earned good will and web site address to
Complainant for nothing more than daring to use the common English word
“target.”
Complainant
cites to Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9,
2000) for the proposition that respondents registered the domain name in bad
faith because it is “inconceivable that the Respondent could make any active
use of the disputed domain names without creating a false impression of
association with the Complainant.” In
fact, it is precisely Respondents’ proper and active use of the domain name
that has caused Complainant to use this dispute process to seize the
domain. Respondents have continuously
used the domain name to promote their pay per click search engine business
catering to users seeking wholesale products.
That continuous use has occurred without creating any false impression
of an association with Complainant.
Respondents’ “false impression” is no more false than any of the domain
names mentioned herein that clearly include the word “target.”
Complainant
cannot cite a single incident in which an Internet user was mislead into
arriving at Respondents’ site or upon arriving at Respondents’ site were
mislead into believing they had arrived at a site affiliated with
Complainant. Nothing about Respondents’
use of this site indicates any affiliation with Complainant or any attempt to
confuse site visitors as to an affiliation.
Complainant
alleges that “Respondents are not using the domain name in connection with the
bona fide offering of goods and services.”
This argument fails when Complainant’s own copy of the web site is
reviewed. As it is clearly seen from
the topmost graphic, the page is offering search engine services catering to
wholesale vendors and their customers.
Search engine services are one of the founding businesses on the
Internet. In fact, it is the one
technology that makes the Internet to have any value at all to users.
Clicking
on the links supplied at <targetwholesale.com>, takes users to the
specified location they are interested in based upon the term clicked. This is the most common use of the
hyperlinked essence of the internet – i.e. starting at one site and clicking
through to other sites as a user’s interests dictate.
Complainant
alleges that Respondents are misdirecting consumers bound for Complainant’s
site to Respondents’ site using “target” improperly as part of Respondents’
domain name. A review of the results of
a Google search of the phrase “target wholesale” demonstrates this fact. The results list for this search does not include respondents’ site. In contrast, a Google search of the generic
term “target” results in a list of sites that also do not include Respondents’ site.
The majority of sites found when a user searches for Complainant’s site
are, in fact, owned and operated by Complainant as this results list
demonstrates.
Complainant’s citation to decision
language that “[r]espondent generated commercial gain by intentionally and
misleadingly diverting users away from Complainant’s site to a competing
website” is proveably false. Respondents’
do not compete with Complainant and neither does their site. Complainant has not alleged that it also
operates a pay per click search engine catering to users seeking wholesale
products.
Respondents’
registration and use of <targetwholesale.com> do not meet any of
the elements of bad faith as alleged by Complainant.
Respondents’
registered six separate domain names on the same day as their registration of <targetwholesale.com>. A review of those domain names reveals that
Respondents sought to attract to its search engine, Internet users seeking
wholesale products not misdirect users destined for Complainant’s site:
|
Domain name |
|
Registration Date |
|
wholesalesite.com |
|
March 21, 2002 |
|
searchforwholesale.com |
|
March 21, 2002 |
|
search4wholesale.com |
|
March 21, 2002 |
|
targetwholesale.com |
|
March
21, 2002 |
|
ewholesalesearch.com |
|
March 21, 2002 |
|
greatwholesale.com |
|
March 21, 2002 |
|
werewholesale.com |
|
March 28, 2002 |
Following
the registration of <targetwholesale.com> Respondents made no
attempt to communicate with Complainant to “sell, rent, or otherwise transfer
the domain name registration to the complainant.” Respondents’ registration of the domain name also does not
“prevent the owner of the trademark or service mark from reflecting the mark in
a corresponding domain name.”
Complainant concedes it owns and uses the domain name “reflecting their
mark.” It is also clear that the
Respondents did not register the domain name for the purpose of disrupting
Complainant’s business. Complainant does
not provide any evidence that the existence of the domain name and its use by
Respondents has had any impact on Complainant’s business.
Complainant
states that “Complainant has not authorized or had control over Respondents’
use of the domain name targetwholesale.com
or any activities associated with the domain names.” While that statement is true, it is also
true that Complainant has not authorized or had control over any of the other
thousands of domain names containing the generic term “target,” whether held by
the owner of a registered trademark in such domain name or not.
Complainant
asserts that “Respondents registered the domain name targetwholesale.com to divert Internet users to a website
featuring advertisements for goods in direct competition with Target’s
goods/services.” As described above,
respondents do not operate retail stores, do not sell goods to the public or
business, do not advertise on television or in the newspaper or compete in any
way with Complainant. Respondents
operate a “pay per click” search engine on the Internet catering to users
seeking wholesale merchandise.
Complainant does not allege that it is in the wholesale goods business,
although it is not a difficult stretch to argue that this complaint is based,
in part, on their desire to establish an Internet presence in a new wholesale
goods business. It does not allege it
operates a “pay per click” search engine or even a free search engine for that
matter and, therefore, cannot claim that Respondents are in competition with
it.
A
review of Complainant’s own description of itself is revealing:
“The Target Stores division
of Target Corporation (“Target”), a licensee of Complainant, has since 1962
operated a chain of TARGET® retail
discount department stores, now numbering more than 1,100 stores in 47
states.”
Nothing
about this description says anything about wholesale goods. Complainant’s own description supports
Respondents’ position that it does not compete with Complainant in its
operation of a pay-per-click search engine.
Complainant
asserts that “Internet users are misleading[ly] led to conclude that they are
visiting a legitimate website affiliated with Target.” Complainant provides no proof for this claim
at all. Users seeking Complainant’s
site are not “misleadingly led” nor can they accidentally arrive at
Respondents’ site using a major search engine.
Respondents’ web site does not contain Complainant’s trademark other
than to specifically disclaim any affiliation with Complainant.
The
claim that Internet users are mistakenly arriving at Respondents’ site when
they believed they were landing on a site affiliated with Complainant is
imaginary. The only reliable way to
arrive at Respondents’ site is to enter the entire domain name into the user’s
browser address bar.
Complainant
has failed to establish any intellectual property rights in the Respondents’
domain name (as they have failed to do so for thousands of other domain names
that use the generic term “target”). In
light of this failure, Respondents have not registered or used the domain name <targetwholesale.com> in bad faith
under ICANN Policy §4(b).
Finally,
Respondents’ registration and use of the domain name <targetwholesale.com> does not meet
the standards for transfer of the domain names to Complainant under the
Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C.A. §1125(d)(1)(A).
C.
Additional Submissions
Complainant
submitted a reply in accordance with the ICANN rules.
Similarity
of the Domain Name to Complainant’s Trademarks
1. Complainant’s
TARGET marks are clearly famous. Among
other things, Complainant’s operation of over 1,100 TARGET® retail discount
stores in 47 of the United States, its numerous valid United States
Registrations, and its extensive advertising promotion throughout the United
States for more than four decades has afforded Complainant’s TARGET marks an
extremely high degree of recognition.
For example, for the last three years, an on-line survey by
Brandchannel.com showed that the TARGET® brand was one of the brands having the
most impact on our lives in the United States and Canada in 2001, 2002 and
2003. Complainant was also selected as Advertising
Age’s Marketer of the Year for 2000.
Similarly, The National Post reported that retail consultants and
analysts have said that Target is “one of the most prestigious names in the
cutthroat discount retail business” and Forbes Magazine recognizes that
“Target has solved the mystery of how to make the Web work for a mass retailer”
and that Target is “one of e-tailing’s savviest players.”
2. Respondents
claim that the domain name <targetwholesale.com>
is not identical or confusingly similar to the TARGET Marks. Respondents’ claim hinges solely on the
addition of the word “wholesale.” The
word “wholesale” commonly means the sale of goods in bulk or quantity. Therefore, the word “wholesale” is clearly
connected to the products and services that Complainant offers and increases
the likelihood of confusion. See e.g., copies of U.S. Registration Nos.
2,793,901 and 2,755,538; see also, 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 Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the westfieldshopping.com
domain name confusingly similar because the WESTFIELD mark was the dominant
element).
3. In
addition, the Panel previously has found numerous domain names that similarly
incorporate Complainant’s TARGET Mark to be confusingly similar and has awarded
those domain names transferred to Complainant.
See Target Brands, Inc. v. Bealo Group S.A., FA
128684 (Nat. Arb. Forum Dec. 17, 2002) (awarding targetstore.net to Complainant); see also Target Brands, Inc. v.
Romanov, FA 156249 (Nat. Arb. Forum June 2, 2003) (awarding targetstore.biz to Complainant); see
also Target Brands, Inc. v. Melia, FA 158432 (Nat. Arb. Forum
Aug. 13, 2003) (awarding target-xxx.com
to Complainant); see also Target Brands, Inc. v. Party Night, Inc., FA
161276 (Nat. Arb. Forum June 16, 2003) (awarding <targetdvd.com> to
Complainant); see also Target Brands, Inc. v. Hosting Provider Service, FA
187396 (Nat. Arb. Forum Sept. 30, 2003) (awarding <targetpills.com> to
Complainant); see also Target Brands, Inc. v. Seventh Summit Ventures, FA
170634 (Nat. Arb. Forum Sept. 9, 2003) (awarding <taregt.com>, <targat.com>, <targey.com>,
<targrt.com> and <targte.com> to Complainant); see also
Target Brands, Inc. v. Shing, FA 190509 (Nat. Arb. Forum Oct.
7, 2003) (awarding <tarrget.com>
and <targetr.com> to Complainant). The current matter is no
different and should be resolved in the same manner.
4. Respondents
registered and used the domain name <targetwholesale.com> long after Complainant’s rights in the
TARGET Marks were established, long after Complainant’s TARGET Marks were
registered with the USPTO, and long after Complainant’s TARGET Marks were
famous. As such, Respondents are
precluded as a matter of law from being able to have acquired any rights in any
confusingly similar mark, including the name Target Wholesale or <targetwholesale.com>.
5. Respondents
have no rights or legitimate interests in the <targetwholesale.com> domain name. They are simply exploiting the fact that Complainant’s customers
and potential customers will, from time to time, include the term “wholesale,”
which is closely related to the products and services that Complainant offers,
in a web browser when looking for information on TARGET® services and
products. Respondents are attempting to
confuse and to divert such customers to their web site for their own commercial
gain through offering a pay-per-click search engine. This use is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo,
FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (finding respondent’s only possible
reason for using the domain name <hpcanada.com> is to intentionally attract, for
commercial gain, Internet users to Respondent’s web site); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding that a
respondent who sought profit by redirecting Internet traffic connected with the
MSNBC mark had no rights or legitimate interests in the famous mark); see
also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2,
2000) (finding no bona-fide use where a respondent used the domain name to
divert Internet users to its competing web site); see also Big Dog Holdings,
Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate
use of a mark when a respondent was using another’s marks to divert Internet
users to its own web site. Further, by
Respondents own admission, they chose the domain name <targetwholesale.com> to attract
users to their search engine.
6. Respondents
admit they were not commonly known by the name Target Wholesale or <targetwholesale.com> prior to
registration of the domain name. Thus,
Respondents are not commonly known by the domain names pursuant to Policy ¶
4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); See also Gallup Inc. v. Amish Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known
by a mark it did not have rights in a domain name incorporating that mark); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding that a respondent had no rights or legitimate interest in
the disputed domain name where it was not commonly known by the mark and never
applied for a license or permission to use the mark).
7. Although
Respondents allege that the web site located at <targetwholesale.com> is not a retail sales web site, it provides
users with links to web sites that are selling consumer products. Respondents’ “wholesale” distinction in
this context is not relevant.
Respondents’ choice of the word “wholesale” simply leads internet users
to believe the site will feature TARGET® products and services to consumers in
bulk or large quantities.
8. Consumers
seeking information on TARGET® products or services available in bulk or
quantity could easily assume that a site with the domain name <targetwholesale.com> is associated
with Complainant, and would be highly surprised to discover that the owner of
the domain name has no relationship to Complainant. Respondents are not a licensee and are not affiliated with
Complainant in any manner. Respondents’ continued use of the domain name <targetwholesale.com> is likely to
confuse Complainant’s customers and potential customers into believing that
there is some affiliation, connection, sponsorship, approval or association
between the Respondents and Complainant when in fact none exists. See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) (“Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse.”); see also Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also America Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding a suggestion of opportunistic bad
faith where a mark was obviously connected with the complainant and its
products and where the respondent had no connection with the complainant or its
products); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum
Sept. 15, 2000) (finding bad faith when the web site in dispute was linked by
the respondent to a second web site, from which second web site the respondent
presumably received a portion of advertising revenue because of his direction
of Internet traffic to that site); see also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the Complainant’s well known
marks, thus creating a likelihood of confusion strictly for commercial gain).
FINDINGS
The
Panel finds Complainant has failed to prove any of the following essential
elements:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Respondents
concede Complainant has rights in the registered TARGET mark. However, the addition of the word
“wholesale” to the generic term “target” is sufficient to overcome the
confusing similarity between the disputed domain name and Complainant’s mark. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common
words and descriptive terms are legitimately subject to registration as domain
names on a 'first-come, first-served' basis."); see also Capt’n Snooze Mgmt. v. Domains 4 Sale,
D2000-0488 (WIPO July 10, 2000) (stating that while “Snooze is an integral part
of Complainant’s trademark registrations . . . this does not entitle the
Complainant to protection for that word alone”); cf. Rollerblade, Inc. v. CBNO and Redican,
D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established,
will defeat a claim of trademark rights, even in a mark which is the subject of
an incontestable registration”).
Respondents
note:
“Complainant
has chosen a trademark that includes a generic and common word used throughout
the English-speaking world long before Complainant’s adoption of that word as
its trademark. That choice by
Complainant cannot act to assist them in asserting dominion over the whole of
domain names which include the word target.”
Complainant
engages in retail merchandizing. The
very impression created by <targetwholesale.com> is that the sales are wholesale and not
retail. Complainant does not
have a monopoly of any domain name with the word “target” in it.
Respondents
are commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii)
because Respondents have consistently used the name since 2002 in connection
with its sale of wholesale products. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000)
(finding that Respondent has rights and a legitimate interest in the domain
name since the domain name reflects Respondent’s company name); see also
World Publ’ns, Inc. v. World Pen, Seattle Pen, Inc., D2000-0736 (WIPO Sept.
14, 2000) (finding that as Respondent registered the trade name "WORLD
PEN" in July 1996 and had been conducting business under that name since
that date, it had rights or legitimate interests in the disputed domain name); see
also Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Nat. Arb.
Forum Oct. 21, 2002) (holding that Respondent had rights and legitimate
interests in the disputed domain name as it had been commonly known by the
domain name and has been using the name "liquid siding" in marketing
its goods and services since the 1990's).
Respondents
also do not directly compete with Complainant.
Respondents are in the wholesale channel of commerce. Complainant is engages in retail sales,
which is a distinctly different channel of commerce.
The
domain name is being used in connection with a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i) because it is offering search
engine services catering to wholesale vendors and their customers. See Modern
Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding
that Respondent’s operation of a bona fide business of online prop rentals for
over two years was evidence that Respondent had rights or legitimate interests
in the disputed domain name); see also Burke Inc v. Leader Technologies LLC,
FA 102822 (Nat. Arb. Forum Mar. 29, 2002) (finding that Respondent’s use of the
disputed domain name to offer non-competing goods and services in commerce,
starting twelve months prior to Complainant’s registration, was evidence that
Respondent had rights or legitimate interests in the disputed domain name).
It
should be noted that Respondents registered this domain name on March 21,
2002. There was no indication
Complainant took prompt actions to protest its rights to the domain name. In the meantime, Respondents have erected a
web site and acquired rights to this domain name.
Respondents
did not intend to misdirect Internet users attempting to reach
Complainant. Respondents registered six
other domain names near the registration date for the disputed name (all but
one name was registered on March 21, 2002) to prove that it did not
intentionally divert Internet users away from Complainant, but merely was
attempting to attract users to a search engine that provided wholesale products.
See also Schering AG v. Metagen
GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not
register or use the domain name <metagen.com> in bad faith where
Respondent registered the domain name in connection with a fair business
interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558
(Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an
active website that has been in use for two years and where there was no intent
to cause confusion with Complainant’s website and business); see also DJF Assocs., Inc. v. AIB Communications,
FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it
has a legitimate interest in the domain name because Respondent selected the name
in good faith for its website, and was offering services under the domain name
prior to the initiation of the dispute).
Respondents
are not competitors of Complainant because Complainant does not offer wholesale
goods; rather, Complainant is in the retail discount business. See Successful Money Mgmt. Seminars, Inc.
v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding
the domain name <seminarsuccess.com> to be generic and that Respondent
registered and used the domain name in good faith “because Respondent selected
the name in good faith for its web site, and was offering services under the
domain name prior to the initiation of the dispute”).
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Honorable Gilbert Thornton Cave,
Honorable Bruce Meyerson, and Houston Putnam Lowry, Chartered Arbitrator and
Chair, Panelist
Dated: Wednesday, March 24, 2004
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