Target Brands, Inc. v. N/A c/o Anthony
Hardy
Claim Number: FA0506000505367
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. Respondent is N/A c/o Anthony Hardy (“Respondent”),
1627 11th Place N.E., Washington, DC 20002.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetoutlet.net>,
registered with Tucows 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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 24, 2005.
On
June 24, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <targetoutlet.net>
is registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
June 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 18, 2005 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@targetoutlet.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 24, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <targetoutlet.net> domain name is confusingly similar to
Complainant’s TARGET mark.
2. Respondent does not have any rights or
legitimate interests in the <targetoutlet.net>
domain name.
3. Respondent registered and used the <targetoutlet.net> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Target
Brands, Inc., licenses its TARGET mark to Target Corporation, of which Target
Stores is a division. Target
Corporation has used the TARGET mark since 1962 to operate a chain of retail
discount department stores. There are
more than 1,300 TARGET stores throughout 47 states.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
(“USPTO”) for the TARGET mark (Reg. No. 2,793,901 issued December 16, 2003)
individually and with a Bullseye Design (Reg. No. 2,755,538 issued August 26,
2003). In addition, Complainant holds
trademark registrations and pending applications in many countries worldwide.
Complainant
operates a website at the <target.com> domain name, which offers
information and online shopping. Forbes Magazine has recognized the
success of Complainant’s online retail business.
Respondent
registered the <targetoutlet.net>
domain name on December 28, 2004.
Respondent has used the domain name to redirect Internet users to a
website that features links to Complainant’s website and to a website at the
<googlemall.com> domain name, which displays links to more than 500
stores and businesses, several of which are in competition with
Complainant. Following a March 1, 2005
cease and desist letter from Complainant, Respondent began displaying content
from Complainant’s website. Complainant
again sent a letter to Respondent on April 14, 2005, after which, Respondent
again changed the content of the website at the disputed domain name to that of
a generic search engine. Then, after a
May 26, 2005 letter from Complainant, Respondent redirected the domain name to
Complainant’s website and indicated to Complainant an interest in becoming one
of Complainant’s affiliates.
Complainant sent Respondent a letter on June 1, 2005, indicating that
Respondent’s website did not qualify for participation in Complainant’s affiliate
program and offering to pay Respondent’s out-of-pocket costs of registration
for the transfer of the domain name to Complainant. Respondent subsequently took down the website and refused to
transfer the domain name registration to Complainant.
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. 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 (Nat. Arb. 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.”).
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
provided evidence of its registrations of the TARGET mark with the USPTO which
constitutes a prima facie case of Complainant’s
rights in the mark. Respondent is
entitled to provide evidence to rebut this presumption of rights in
Complainant’s favor. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive [or] have acquired secondary meaning.”). Respondent’s failure to submit a response in
this matter leaves the Panel with no evidence to contest Complainant’s prima facie case of rights. The Panel, therefore, concludes that
Complainant has established rights in the mark for the purposes of fulfilling
Policy ¶ 4(a)(i).
It has been
widely held under the Policy that the addition of a generic or descriptive term
to a complainant’s registered mark will not form a domain name that is distinct
from the complainant’s mark. See Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Arthur Guinness 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). Thus, the addition of the generic or descriptive term “outlet” to
Complainant’s TARGET mark to form the <targetoutlet.net>
domain name does not negate the confusing similarity between the domain name
and Complainant’s mark. Furthermore,
the addition of the generic top-level domain (“gTLD”) “.net” is irrelevant to a
determination of similarity under Policy ¶ 4(a)(i). See 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); see also Isleworth Land Co.
v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding
it is a “well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i) analysis”). Therefore, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s TARGET mark pursuant to
Policy ¶ 4(a)(i).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Under the
Policy, the complainant has the initial burden of asserting that the respondent
lacks rights and legitimate interests in the disputed domain name. The panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001), held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Woolworths
plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent
evidence of preparation to use the domain name for a legitimate purpose, the
burden of proof lies with the respondent to demonstrate that it has rights or
legitimate interests); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to the respondent to demonstrate that such a right or legitimate interest does
exist). The Panel finds that
Complainant has met its initial burden and established a prima facie case, and the Panel will now analyze whether Respondent
has met its burden to establish rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <targetoutlet.net> domain name and that Respondent has never
been a licensee of Complainant or any of Complainant’s predecessors in
interest. The WHOIS information for the
disputed domain name identifies Respondent as “Hardy, Anthony” and does not
appear to indicate any affiliation between Respondent and the disputed domain
name other that Respondent’s registration.
Since the Panel has not received a response from Respondent to rebut
Complainant’s evidence, the Panel finds that Respondent has failed to establish
rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA
109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the
respondent was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”); see also Am. Online,
Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or
legitimate interests where the respondent fails to respond).
Respondent has
used the <targetoutlet.net>
domain name to divert Internet users to a website displaying links to
Complainant’s website and to a website at the <googlemall.com> domain
name, which includes links to over 500 stores and businesses, many of which are
in competition with Complainant.
Presumably, Respondent is earning referral fees for diverting Internet
users to websites via links on Respondent’s website. The Panel finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s TARGET mark to attract Internet users to
Respondent’s commercial website is not a use in connection with a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain
name); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002)
(finding no bona fide offering of
goods or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec.
10, 2000) (finding that domain names used to sell the complainant’s goods
without the complainant’s authority, as well as others’ goods, is not bona fide use). In addition, in failing to submit a response
to Complainant’s allegations, Respondent has neglected to provide any evidence
that would challenge Complainant’s prima
facie case. Thus, the Panel finds
that Respondent has not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c).
See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
The <targetoutlet.net> domain name
redirects Internet users to a website that features links to Complainant’s
website as well as the websites of many of Complainant’s competitors. The Panel infers that Respondent receives
referral fees for diverting Internet users to these businesses via Respondent’s
website at the disputed domain name.
Additionally, by using Complainant’s famous TARGET mark in the domain
name, Respondent has created a likelihood of confusion and is attempting to
attract Internet users to Respondent’s website for Respondent’s commercial
gain. The Panel finds that these
circumstances constitute evidence of bad faith registration and use under
Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through the respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using the complainant’s famous marks and likeness); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
The Policy lists
four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith
registration and use. However, this
list is not intended to be comprehensive, and the Panel has, therefore, chosen
to consider additional factors which support its finding of bad faith
registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent has
used the <targetoutlet.net>
domain name, which contains Complainant’s TARGET mark, to redirect Internet
users to a website that links to Complainant’s website at the
<target.com> domain name. This
suggests that Respondent had actual knowledge of Complainant’s rights in the
mark when it registered the domain name and chose the disputed domain name
based on the goodwill Complainant has acquired in its TARGET mark. Furthermore, Complainant’s registration of
the TARGET mark with the USPTO bestows upon Respondent constructive notice of
Complainant’s rights in the mark.
Respondent’s registration of a domain name containing Complainant’s mark
in spite of Respondent’s actual or constructive knowledge of Complainant’s
rights in the mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See 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 Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the
domain name at issue to resolve to a website at which Complainant’s trademarks
and logos are prominently displayed.
Respondent has done this with full knowledge of Complainant’s business
and trademarks. The Panel finds that this conduct is that which is prohibited
by Paragraph 4(b)(iv) of the Policy.”); see
also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <targetoutlet.net>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
August 2, 2005
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