Target Brands, Inc. v. Shu Lin
Claim Number: FA1902001828073
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Shu Lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetaccount.com>, registered with Above.com Pty Ltd..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2019; the Forum received payment on February 1, 2019.
On February 3, 2019, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <targetaccount.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@targetaccount.com. Also on February 14, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Respondent’s <targetaccount.com> domain name is confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <targetaccount.com> domain name.
3. Respondent registered and uses the <targetaccount.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands, Inc., is a retail department store. Complainant holds a registration for the TARGET mark with the United States Patent and Trademark Office (“USTPO”) (Reg. No. 818,410 registered on Nov. 8, 1966).
Respondent registered the <targetaccount.com> domain name on March 22, 2009, and uses it to distribute malware.
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."
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.
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(f), 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 (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.”).
The Panel finds that Complainant has established rights in the TARGET mark for the purposes of Policy ¶ 4(a)(i) based upon its registration of the mark with the USTPO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its registration of the mark with the USTPO (e.g., Reg. No. 818,410, registered on Nov. 8, 1966).
Respondent’s <targetaccount.com> domain name incorporates the TARGET mark in its entirety and adds a descriptive term and a gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s <targetaccount.com> domain name is confusingly similar to Complainant’s TARGET mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <targetaccount.com> domain name because Respondent is not authorized to use Complainant’s TARGET mark and is not commonly known by the domain name. The WHOIS information of record identifies Respondent as “Shu Lin.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests in the <targetaccount.com> domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson,FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant argues that Respondent fails to use the <targetaccount.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to redirect Internet users to a rotating series of websites, some of which aim to install malware on users computer. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (“Using a disputed domain name to operate an FFDNS scheme and distribute malicious software or phish for users’ information is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).”). Complainant provides a screenshot that shows that Respondent attempts to use the disputed domain name to download malicious software. Therefore, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering or legitimate noncommercial or fair use and thus has no rights under Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <targetaccount.com> domain name in bad faith because Respondent has shown a pattern of bad faith registration and use. Complainant provides a list of cases in which previous panels have ordered Respondent to transfer domain names. Therefore, the Panel finds that Respondent engages in a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”
Complainant argues that Respondent attempts to attract users by creating a likelihood of confusion with Complainant’s TARGET mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, in order to gain commercially by redirecting users to Complainant’s competitor or installing malware. Attempting to create a likelihood of confusion for commercial gain may evince bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). Complainant contends that Respondent implies an affiliation with Complainant, and that Internet users are confused into visiting Respondent’s webpage, which redirects to competitors or installs malware. The Panel agrees and finds that Respondent registered and uses the <targetaccount.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant shows that Respondent uses the <targetaccount.com> domain name to distribute malicious software. Attempting to use a disputed domain name to install malware on a user’s computer evinces bad faith. See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Accordingly, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TARGET mark prior to registering the <targetaccount.com> domain name. Complainant contends that its mark is famous, and that Respondent exhibits its knowledge of the mark through its use of it in the domain name combined with the related word “account.” Complainant also cites Respondent’s use of the domain name to resolve to Complainant’s own webpage and that of one of Complainant’s competitors. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s TARGET mark prior to registering the <targetaccount.com> domain name, supporting a finding of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied 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 <targetaccount.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 9, 2019
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