Target Brands, Inc. v. Andrew Beavers d/b/a Target Online Superstore
Claim Number: FA0807001213530
Complainant is Target Brands, Inc. (“Complainant”), represented by Lisa
C. Walter, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <targetonlinesuperstore.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2008.
On July 2, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <targetonlinesuperstore.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 30, 2008 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@targetonlinesuperstore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <targetonlinesuperstore.com> domain name is confusingly similar to Complainant’s TARGET and SUPER TARGET marks.
2. Respondent does not have any rights or legitimate interests in the <targetonlinesuperstore.com> domain name.
3. Respondent registered and used the <targetonlinesuperstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant’s licensee, Target Corporation, Inc., has operated since 1962, under the TARGET mark, a chain of retail discount department stores, now numbering more than 1,400 stores in 47 states. Complainant’s TARGET mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 845,193 issued Feb. 27, 1968) for discount retail department stores services. Complainant is also very active in electronic online retail services, operating its own site at the <target.com> domain name. The TARGET mark was additionally registered with the USPTO for online retail store services on December 16, 2003 (Reg. No. 2,793,901). Furthermore, Complainant maintains a brand of TARGET retail stores under the SUPER TARGET mark, likewise registered with the USPTO (Reg. No. 1,917,860 issued March 5, 1996).
The <targetonlinesuperstore.com> domain name was registered on January 31, 2008. It resolves to a website offering services in competition with those offered under Complainant’s TARGET mark. This website sells a variety of commercial products and services, many of which are sold in Complainant’s stores and online through Complainant’s <target.com> domain name.
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.
The Panel finds that Complainant has established rights under
Policy ¶ 4(a)(i) in both the TARGET and SUPER TARGET marks through their
registrations with the USPTO. See
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark
registration adequately demonstrates a complainant’s rights in a mark under
Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos,
FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has
established rights in the BAKERS SQUARE mark by registering it with the United
States Patent and Trademark Office (“USPTO”).”).
The <targetonlinesuperstore.com> domain name contains Complainant’s TARGET mark followed by the generic and descriptive words “online superstore.” The word “online” describes the nature of Complainant’s own e-commerce and commercial activities. Moreover, the word “superstore” corresponds to and describes the brand of retail stores Complainant operates under its SUPER TARGET mark. The inclusions of words that describe a Complainant’s business do not sufficiently distinguish a disputed domain name. The <targetonlinesuperstore.com> domain name likewise incorporates the generic top-level domain (“gTLD”) “.com.” This is, however, irrelevant to a Policy ¶ 4(a)(i). Accordingly, the Panel finds the disputed domain name to be confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).
The Panel finds that Complainant has satisfactorily established Policy ¶ 4(a)(i).
A complainant must first establish a prima facie case under Policy ¶ 4(a)(ii) that Respondent lack rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has met this threshold and that the burden is accordingly shifted to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
Respondent has not replied to the Complaint. Accordingly, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name. Nevertheless, the Panel will examine the record in consideration of the elements listed under Policy ¶ 4(c). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); 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).
Complainant asserts that it has never granted permission or license to Respondent to use the TARGET mark in any way. Additionally, although the WHOIS information lists the registrant of the disputed domain name as “Target Online Superstore,” there is no other information that indicates that Respondent is or ever was commonly known by the disputed domain name. Without any additional information, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”).
The <targetonlinesuperstore.com> domain name is
confusingly similar to Complainant’s mark and resolves to a website providing a
competing service by offering many of the same products sold in retail stores
operated under Complainant’s TARGET mark.
It has been established in previous UDRP proceedings that use of a
confusingly similar website in connection with competing services is not a bona fide use under the Policy. Accordingly, the Panel finds that
Respondent’s use of the disputed domain name 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 Summit Group, LLC v. LSO,
Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the
respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect
Internet users to respondent’s own website for commercial gain does not
constitute either a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain
name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent
used the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site).
The Panel finds that Complainant has satisfactorily established Policy ¶ 4(a)(ii).
Respondent is using the disputed domain name to resolve to a competing online retail store. This competitive use is sufficient to establish Respondent’s intent to disrupt Complainant’s business. As a consequence, the Panel likewise finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
The disputed domain name is confusingly similarity to Complainant’s TARGET mark and resolves to an online retail store. The disputed domain name’s use not only competes with Complainant, but it creates a likelihood of confusion with Complainant’s mark because of the similarity of services. Therefore, the Panel finds this to be further evidence of Respondent’s bad faith registration and use of the <targetonlinesuperstore.com> domain name pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Complainant has satisfactorily 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 <targetonlinesuperstore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 14, 2008
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