Target Brands, Inc. v. Titan Net a/k/a Titan
Claim Number: FA0605000697980
Complainant is Target Brands, Inc. (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP, 1700 Lincoln St., Suite 3200, Denver, CO 80203-4532. Respondent is Titan Net a/k/a Titan (“Respondent”), Net, Kenyatta Ave., PO Box 4276-30100, Eldoret, KE 30100.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <targetcoupon.org>, registered with Intercosmos Media Group, 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.
Honorable Paul A. Dorf, (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 3, 2006.
On May 2, 2006, Intercosmos Media Group, Inc. confirmed by e-mail to the National Arbitration Forum that the <targetcoupon.org> domain name is registered with Intercosmos Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. has verified that Respondent is bound by the Intercosmos Media Group, 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 May 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 30, 2006 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@targetcoupon.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <targetcoupon.org> domain name is confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <targetcoupon.org> domain name.
3. Respondent registered and used the <targetcoupon.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands, Inc., owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TARGET mark, the Bullseye Design mark, and the integrated TARGET and Bullseye Design mark. Complainant first registered the TARGET mark with the USPTO on February 27, 1968 (Reg. No. 845,193). Complainant also holds valid registrations or has trademark applications pending for the TARGET mark throughout the world.
Since 1962, the Target Stores division of Complainant has operated a chain of retail discount department stores throughout the United States. In connection with its retail stores, Complainant also operates an informational and shopping website at the <target.com> domain name. As a result of nationwide marketing and advertising promotion, Complainant’s TARGET mark has become a distinct and commonly known mark throughout the United States.
Respondent registered the <targetcoupon.org> domain name on February 3, 2006. Respondent is using the disputed domain name to operate a website that features commercial links to third-party websites from which Respondent presumably receives referral fees.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
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 established using extrinsic proof in this
proceeding that it has legal rights in the TARGET mark through registration of
the mark with the USPTO. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
The
disputed domain name that Respondent registered, <targetcoupon.org>,
is confusingly similar to
Complainant’s TARGET mark because Respondent’s domain name incorporates
Complainant’s mark in its entirety and adds the term “coupon” and the generic
top-level domain “.org.” The Panel
finds that such minor additions to Complainant’s registered mark do not
sufficiently differentiate the confusingly similar aspects of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i).
See 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); see also Busy Body, Inc.
v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he
addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . .").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the <targetcoupon.org> domain name. Once Complainant makes a prima facie case in support of its allegations, a rebuttable presumption exists that Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Furthermore, the burden shifts to Respondent to show otherwise. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel chooses to analyze whether the evidence supports rights or legitimate interests.
Complainant contends that Respondent is using the confusingly similar <targetcoupon.org> domain name to operate a website that features commercial links to third-party websites from which Respondent presumably receives referral fees. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s mark or any variation thereof. Without evidence to suggest otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <targetcoupon.org> domain name to operate a website that features commercial links to third-party websites from which Respondent presumably receives referral fees. The Panel infers that Respondent receives click-through fees for misleading consumers to these websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill of the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that 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 <targetcoupon.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf, (Ret.), Panelist
Dated: June 20, 2006
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