Target Brands, Inc. v. Ideal Products
Claim Number: FA0507000525199
PARTIES
Complainant
is Target Brands, Inc. (“Complainant”)
represented by Jodi A. DeSchane, of 2200 Wells Fargo Center,
90 South Seventh Street, Minneapolis, MN 55402. Respondent is Ideal
Products (“Respondent”), 387 E 1500 N, Pleasant Grove, UT 84062.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetbargains.com>
(the “Domain Name”), registered with Network
Solutions, Inc.
PANEL
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.
Michael
Albert as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 28, 2005.
On
July 29, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration
Forum that the <targetbargains.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 22,
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@targetbargains.com by e-mail.
A
timely Response was received on August 22, 2005. However, only a partial copy of the Response was received, thus
the National Arbitration Forum does not consider the Response to be in
compliance with ICANN Rule #5(a). The
Panel has nevertheless considered the Response. See Strum v. Nordic Net Exchange AB, FA 102843
(Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of
formal deficiencies would be an extreme remedy not consistent with the basic
principles of due process.").
Complainant’s
Additional Submission was received on August 29, 2005.
On September 1, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that:
•
Complainant owns a large, famous, and longstanding chain of retail discount
department stores, now numbering more than 1,300 stores in 47 states.
•
Complainant holds numerous valid United States trademark registrations for the
TARGET mark, the Bullseye Design Mark, and the combination of the
two (collectively the “Target Marks”).
Complainant has appended to its complaint evidence of its registrations,
both domestic and foreign.
•
Complainant also offers evidence of the widespread fame of its image and
marks. The Target Bullseye Design in
particular has been recognized in advertising literature as an icon in a class
among other leading corporate icons.
•
Respondent registered the disputed Domain Name on October 9, 2003 and uses it to link users to a retail web site
offering a range of consumer products for sale. Respondent’s web site features a bullseye logo and uses the
slogan “We hit the Bull’s Eye on low prices!”
•
Respondent is not licensed by Complainant and failed to respond to an initial
cease and desist letter. In response to
a later letter it offered to sell the Domain Name for at least $100,000.
B.
Respondent
Respondent
contends that:
•
Respondent sells discount items while Complainant sells to an upscale market;
•
The TARGET marks have some differences in appearance and design from
Respondent’s marks;
•
By selecting a common word in the English language for its mark, Complainant is
attempting to enforce a mark that is common or generic; and
•
There was no bad faith intent to trade on the fame or goodwill associated with
Complainant’s mark in the selection of the Domain Name.
C.
Additional Submissions
In
its additional submission, Complainant responds to the genericness allegation,
noting that federally registered trademarks must be presumed to be
non-generic. Complainant also further
argues in support of its allegations of lack of legitimate rights and bad
faith.
FINDINGS
The Panel finds that Complainant has
established that it owns protectable rights in the TARGET marks; that the
Domain Name is confusingly similar to the TARGET mark; and that the Domain Name
was registered in bad faith as defined in the Policy.
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.
The
Domain Name incorporates Complainant’s entire well-known TARGET mark. Moreover, the Domain Name is used to direct
users to an e-commerce site very similar in overall scope (retailing a variety
of consumer goods) to the primary use for which Complainant’s mark is known.
The
Domain Name differs from the TARGET mark only in the addition of the generic
term “bargains.” This term is, by its
very nature, closely associated with retail sales – the services for which
Complainant has federally registered and used the TARGET mark for over 40
years. The addition of “bargains” does
not decrease the likelihood of confusion.
See Space Imaging LLC v. Brownwell, 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 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); see also Smartbargains.com,
L.P. v. Universal Banner, FA 373634 (Nat. Arb. Forum Jan.13, 2005) (finding
that merely adding various generic marketing “buzzwords,” such as “direct,”
“shop,” “buy,” and “online” does not negate the confusing similarity between
the respondent’s domain names and the complainant’s mark pursuant to Policy ¶
4(a)(i)).
Respondent’s
contention that the TARGET mark is generic because “Target” is a common English
word is unsubstantiated and unpersuasive.
The use, marketing, and successful retailing of an enormous volume of
products under and in connection with that brand name over the past forty
years, and Complainant’s many U.S. and international registrations for the
mark, undermine any such theory. While
the word “target” does have an ordinary meaning and use in the English language
and cannot be removed from the language for all purposes, Complainant has overwhelmingly
established that it has rights in the TARGET mark in connection with retail
sales services. See 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 and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (noting that 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, and that a respondent has the burden of refuting this
assumption). Respondent has not met, or
even offered any evidence tending to meet, its burden to establish genericness.
In
short, the Domain Name is confusingly similar to Complainant’s mark.
Respondent
does not appear to have, and does not claim to have, any trademark or other
intellectual property rights in the Domain Name. It also does not appear to be commonly known by the Domain Name
as defined in the Policy. 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). Indeed, Respondent appears to be
known by the name “Ideal Products.”
Respondent
also is not, and never has been, a licensee of Complainant. See
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).
Respondent’s
use of the Domain Name to sell products – including clocks, clothing, picture
frames, office accessories, and other products that are available at Target
Stores or on-line at Complainant’s e-commerce site <target.com>, is not a
“legitimate use” under the Policy. See Computerized Sec. Sys., Inc. v.
Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation
of [Complainant’s] SAFLOK mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that the respondent’s commercial use of the
domain name to confuse and divert Internet traffic is not a legitimate use of
the domain name).
Under
these circumstances, Respondent lacks any valid rights or legitimate interests
in the domain name under ICANN Policy ¶ 4(a)(ii).
At the time Respondent registered the
Domain Name, the TARGET mark was sufficiently well known, and had been
federally registered, such that Respondent is deemed to have constructive
notice of 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 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”).
Although
Respondent denies any bad faith intent, the Panel is persuaded that there is
little if any plausible explanation for its choice of Domain Name other than to
intentionally
attract, for commercial gain, Internet users to Respondent’s web site by
creating a likelihood of confusion with Complainant’s well-established mark as
to the source, sponsorship, affiliation or endorsement of Respondent’s web
site. See Luck's Music Library v.
Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000)
(finding that the respondent had engaged in bad faith use and registration by
linking the domain name to a web site that offers services similar to the complainant’s
services); 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 for commercial gain).
As
further evidence of bad faith, Respondent’s web site also contains a logo
similar to Complainant’s Bullseye Design mark.
See Land O’Lakes, Inc. v. Offbeat Media, Inc., FA 96451 (Nat. Arb.
Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent utilized a domain name confusingly similar to the complainant’s mark
and used a confusingly similar depiction of the complainant’s registered
trademark on its web site to cause confusion as to the source or affiliation of
the site); see also Google
Technology, Inc. v. Internet Hispano, S.L., FA 76533 (Nat. Arb. Forum Sept.
16, 2003) (finding bad faith where the respondent used a domain name
confusingly similar to the complainant’s mark and used a logo similar to the
complainant’s mark on the respondent’s website creating a likelihood of
confusion as to the source, sponsorship, affiliation and endorsement of the
respondent’s website and/or the goods and services advertised on that website). The few differences (in color, angle, and
presence of an arrow) between Respondent’s “target” image and Complainant’s
famous bullseye mark do not eliminate the likelihood of confusion, particularly
given the Domain Name itself, <targetbargains.com>. Respondent’s use of the slogan “We hit the
Bull’s Eye on Low Prices!” on its web site also adds to confusion as
Complainant’s design mark is publicly known as the “bullseye,” as evidenced in
retailing literature attached to the Complaint.
Moreover, even assuming that consumers, upon reaching and using
Respondent’s site, would have sufficient indicia that Complainant was not the
source of the retail services in question, Respondent would still have
benefited from “initial interest confusion.”
The user seeking a Target-brand Internet retailer may purchase products
from Respondent instead. See Brookfield Communications, Inc.
v. West Coast Entertainment Corp., 174 F.3d. 1036 (9th Cir.
1999) (finding that even if Internet users accessing a web site realize that
they have reached a site unrelated to the registered mark holder whose name is
identical or confusingly similar to the domain name, the domain name operator
will still have gained a customer by appropriating the goodwill that the holder
of the mark has developed).
In
sum, the Panel finds that Respondent has registered and used the Domain Name in
bad faith under ICANN Policy § 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetbargains.com>
domain name be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: September 19, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum