Target Brands, Inc. v. Wincer Song
Claim
Number: FA0507000510909
Complainant is Target Brands, Inc. (“Complainant”), represented
by Jodi A. DeSchane, of Faegre & Benson LLP,
2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN 55402. Respondent is Wincer Song (“Respondent”) Shanghai, 200000, China.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <targetstoreonline.com>, registered
with Go Daddy Software, Inc., and <target-store-online.com>,
registered with Xin Net Technology Corpor.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 11, 2005.
On
July 12, 2005 Go Daddy Software, Inc., confirmed by e-mail to the National
Arbitration Forum that the domain name <targetstoreonline.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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 14, 2005, Xin Net Technology Corpor confirmed by e-mail to the National
Arbitration Forum that the domain name <target-store-online.com>
is registered with Xin Net Technology Corpor and that Respondent is the current
registrant of the name. Xin Net
Technology Corpor has verified that Respondent is bound by the Xin Net
Technology Corpor 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 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 9, 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@targetstoreonline.com and
postmaster@target-store-online.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 15, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <targetstoreonline.com>
and <target-store-online.com> domain names are confusingly
similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or
legitimate interests in the <targetstoreonline.com> and <target-store-online.com>
domain names.
3. Respondent registered and used the <targetstoreonline.com>
and <target-store-online.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Target Brands, Inc., licenses its TARGET mark
to Target Corporation, of which Target Stores is a division. Target Corporation has used the TARGET mark
since 1962 to operate a chain of retail discount department stores. There are more than 1,300 TARGET stores throughout
47 states.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
(“USPTO”) for the TARGET mark (E.g., Reg. No. 2,793,901 issued December
16, 2003) individually and with a Bullseye Design (E.g., Reg. No.
2,755,538 issued August 26, 2003). In
addition, Complainant holds trademark registrations and pending applications in
many countries worldwide.
Complainant
operates a website at the <target.com> domain name, which offers
information and online shopping. Forbes Magazine has recognized the
success of Complainant’s online retail business.
Respondent
registered the <targetstoreonline.com> and <target-store-online.com> domain names on December 17, 2003. Respondent has used the domain names to
redirect Internet users to a shopping search engine and to a website displaying
products for sale in direct competition with Complainant.
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
asserts that it has established rights in the TARGET mark through registration
with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 845,193
issued February 27, 1968). See 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.”); see
also Innomed Techs., 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.”).
Moreover, the <targetstoreonline.com>
and <target-store-online.com> domain names are confusingly
similar to Complainant’s TARGET mark because the domain names incorporate
Complainant’s mark in its entirety and merely add the common and descriptive
words “store” and “online.”
Respondent’s <target-store-online.com> domain name
aditionally adds hyphens to Complainant’s TARGET mark. These changes are not enough to overcome the
confusingly similar aspects of Respondent’s domain names 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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
(finding the <westfieldshopping.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element); see also Nintendo of
Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding
<game-boy.com> identical and confusingly similar the complainant’s GAME
BOY mark, even though the domain name is a combination of two descriptive words
divided by a hyphen).
Furthermore,
Respondent’s <targetstoreonline.com> and <target-store-online.com>
domain names are confusingly similar to Complainant’s TARGET mark because
the domain names incorporate Complainant’s mark in its entirety and deviate
with the addition of the generic top-level domain ‘.com.’ The addition of a generic top-level domain
does not negate the confusingly similar aspects of Respondent’s domain names
pursuant to Policy ¶ 4(a)(i). See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding
that the top level of the domain name such as “.net” or “.com” does not affect
the domain name for the purpose of determining whether it is identical or
confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent does
not have rights or legitimate interests in the <targetstoreonline.com>
and <target-store-online.com> domain names. When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or legitimate interests in the domain name); 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 rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Moreover,
Respondent is not commonly known by the <targetstoreonline.com> and
<target-store-online.com> domain names. Thus, the Panel may conclude that Respondent has not established
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where respondent was
not commonly known by the mark and never applied for a license or permission
from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights
or legitimate interests in domain names because it is not commonly known by
complainant’s marks and respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use).
Furthermore,
Respondent is using the <targetstoreonline.com> and <target-store-online.com>
domain names to operate a website featuring commercial links to Respondent’s
own website. The Panel may find that
Respondent’s use of domain names that are confusingly similar to Complainant’s
mark to divert Internet users to third-party websites for Respondent’s own
commercial gain does not constitute 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 TM Acquisition Corp. v. Sign Guards, FA
132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s diversionary
use of complainant’s marks to send Internet users to a website which displayed
a series of links, some of which linked to competitors of complainant, was not
a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona fide offering of goods
or services); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because the
respondent's sole purpose in selecting the domain names was to cause confusion
with the complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to its
commercial websites. Respondent registered and used the disputed
domain names in bad faith under Policy ¶ 4(b)(iv) as Respondent is using the <targetstoreonline.com>
and <target-store-online.com> domain names to intentionally attract, for commercial gain, Internet
users to its website, by creating a likelihood of confusion with Complainant as
to the source, sponsorship, affiliation or endorsement of its website. See H-D Michigan, Inc. v. Petersons Auto,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
Moreover,
Respondent’s <targetstoreonline.com> and <target-store-online.com>
domain names cause Internet users to mistakenly believe that the disputed
domain names are affiliated with Complainant.
Complainant asserts that the initial user confusion that the domain
names cause is evidence that Respondent registered and used the domain names in
bad faith pursuant to Policy ¶ 4(a)(iii).
See Sony Kabushiki Kaisha
v. 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”); 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
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
Furthermore,
Respondent has used the <targetstoreonline.com> and <target-store-online.com>
domain names, which contain Complainant’s TARGET mark, to redirect Internet
users to a website featuring a shopping search engine and a website selling
products that compete with Complainant’s business. This suggests that Respondent had actual knowledge of
Complainant’s rights in the mark when it registered the domain names and chose
the disputed domain names based on the goodwill Complainant has acquired in its
TARGET mark. Furthermore, Complainant’s
registration of the TARGET mark with the USPTO bestows upon Respondent
constructive notice of Complainant’s rights in the mark. Respondent’s registration of a domain name
containing Complainant’s mark in spite of Respondent’s actual or constructive
knowledge of Complainant’s rights in the mark is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Am. Online, Inc.
v. Miles, FA 105890 (Nat. Arb. Forum May
31, 2002) (“Respondent is using the domain name at issue to resolve to a
website at which Complainant’s trademarks and logos are prominently
displayed. Respondent has done this
with full knowledge of Complainant’s business and trademarks. The Panel finds
that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the
Policy.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between the complainant’s mark
and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the Complainant’s mark when it registered the
subject domain name”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
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 <targetstoreonline.com> and <target-store-online.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
August 26, 2005
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