Target Brands, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico / Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1906001848345
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico / Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <targetpayandbemefits.com> and <comtarget.com>, registered with GoDaddy.com, LLC and Media Elite Holdings Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2019; the Forum received payment on June 17, 2019.
On June 18, 2019; Jun 24, 2019, GoDaddy.com, LLC; Media Elite Holdings Limited confirmed by e-mail to the Forum that the <targetpayandbemefits.com> and <comtarget.com> domain names are registered with GoDaddy.com, LLC; Media Elite Holdings Limited and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Media Elite Holdings Limited has verified that Respondent is bound by the GoDaddy.com, LLC; Media Elite Holdings Limited 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 June 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@targetpayandbemefits.com, postmaster@comtarget.com. Also on June 28, 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 July 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The WHOIS information for the domain names indicates similar registrant information for the nominal registrants and both domain names redirects internet users to third-party websites offering either malware or advertising. Complainant offers additional unopposed evidence tending to show that the nominal registrants of the at-issue domain names are actually the same person or entity. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant owns and operates a chain of retail stores.
Complainant has rights in the TARGET mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <targetpayandbemefits.com> and <comtarget.com> domain names are identical or confusingly similar to Complainant’s mark as Respondent merely adds the terms “pay and bemefits” and “com” to each respective domain name and the “.com” generic top-level domain (“gTLD”) to both disputed domain names.
Respondents has no rights or legitimate interests in the <targetpayandbemefits.com> and <comtarget.com> domain names as Respondent is not commonly known by the at-issue domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass itself off as Complainant to redirect internets users to third-party sites that either feature advertisements or malware.
Finally, Respondent’s <targetpayandbemefits.com> and <comtarget.com> domain names were registered and used in bad faith, as Respondent has a history of bad faith registrations and a number of successful UDRP actions have been brought against the Respondent. Respondent attempts to pass off as Complainant, for commercial gain. Additionally, Respondent has actual knowledge of Complainant’s right in the TARGET mark. Furthermore, Respondent is using the <targetpayandbemefits.com> domain name to engage in phishing.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TARGET mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the TARGET trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and then direct internet users to websites which display advertising or promulgate 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its TARGET trademark. Such registration is sufficient to demonstrate Complainant’s rights in the TARGET mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <targetpayandbemefits.com> and <comtarget.com> domain names each contain Complainant’s TARGET trademark followed by the generic term “payandbemefits” or prefixed by the generic term “com” --both domain names end with the top-level domain name “.com”. The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either domain name from the Complainant’s TARGET mark for the purposes of Policy ¶ 4(a)(i). In fact, the included generic terms somewhat suggest Complainant’s business related activities. Their inclusion in Respondent’s domain names only add to any confusion between the domain names and Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <targetpayandbemefits.com> and <comtarget.com> domain names are each confusingly similar to Complainant’s trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Here, 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.
WHOIS information for the at-issue domain names identifies the domain names’ registrants as Carolina Rodrigues / Fundacion Comercio Electronico, for the <targetpayandbemefits.com> domain name and Domain Administrator / Fundacion Privacy Services LTD, for the <comtarget.com> domain name. The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <targetpayandbemefits.com> or the <comtarget.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <targetpayandbemefits.com> or <comtarget.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <targetpayandbemefits.com> and <comtarget.com> domain names pose as being affiliated or sponsored by Complainant and on browsing to such addresses direct internet visitors to websites which either display advertising or engage in the distribution of malware. For example, one referred website displays an advertisement of a well-known electronics company and another offers a pop-up that is designed to download malware to the site visitor’s device. Respondent’s use of the domain names for such purposes shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1807097 (Forum Oct. 30, 2018) (no rights or legitimate interests found where “Respondent uses the disputed domain name to lure internet users to a website that attempts to install malware on the user’s computer, and redirects internet users to Complainant’s competitor’s websites.”)
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent has generated a pattern of bad faith domain name registration. Complainant evidences numerous adverse UDRP decisions against Respondent. Respondent’s pattern of domain name abuse suggests Respondent’s bad faith registration and use of the at-issue domain names in the instant proceeding pursuant to Policy ¶ 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains…Of this list, 67 use the same email, support@domainp.net, as the Complainant.” A search at the ADR Forum … for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer (one was denied and one was withdrawn).
Next, Respondent registered and uses the <targetpayandbemefits.com> and <comtarget.com> domain names to deceive internet users so that it might gain commercially. Doing so demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). Complainant shows that Respondent’s <comtarget.com> directed internet users to third-party webpages with advertisements, from which Respondent presumably profits. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also, Costco Wholesale Membership, Inc. v. Domain Admin, Whois Privacy Corp./Ryan G Foo, PPA Media Services, D2015-2095 (WIPO Jan. 12, 2016) (finding bad faith where respondent used domain name to “direct Internet traffic to the rotating web pages from which it most likely derives profit.”)
Furthermore, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark, or as here regarding <targetpayandbemefits.com>, into an official domain name owned by the trademark holder. The registrant then uses the resulting string in a domain name hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark or official domain name; and/or 2) in viewing the domain name will confuse the domain name with its target trademark or official domain name. Here, in creating the at-issue <targetpayandbemefits.com> domain name Respondent misspells Complainant’s <targetpayandbenefits.com> domain name by substituting its second “n” with an “m” and in creating <comtarget.com> prefixes Complainant’s <target.com> domain name with the generic term and common top-level domain name “com.” Typosquatting further indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Additionally, Respondent engages in a phishing scheme that attempts to install malware on the devices of third parties visiting websites addressed by the at-issue domain names. Complainant’s evidence of Respondent’s use of the <targetpayandbemefits.com> domain name to install malware onto internet visitors’ devices shows Respondent’s bad faith under Policy ¶ 4(a)(iii). 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).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the TARGET mark when it registered <targetpayandbemefits.com> and <comtarget.com> as domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and Respondent’s registration of multiple domain names containing Complainant’s trademark. Respondent’s registration of the two confusingly similar domain names without having rights or interests in such domain names but all the while having knowledge of Complainant’s rights therein, shows Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetpayandbemefits.com> and <comtarget.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 23, 2019
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