Target Brands, Inc. v. RedAmazon Group
Claim Number: FA0601000626820
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 RedAmazon Group (“Respondent”), 1533 Prudential Drive, Dallas, TX 75235.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <targetsurplus.com>, registered with Go Daddy Software, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 17, 2006.
On January 17, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <targetsurplus.com> domain name 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 January 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 7, 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@targetsurplus.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <targetsurplus.com> domain name is confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <targetsurplus.com> domain name.
3. Respondent registered and used the <targetsurplus.com> 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 <targetsurplus.com> domain name on August 1, 2004. Respondent is using the disputed domain name to direct Internet users to a commercial website offering products that are also available at Complainant’s stores and on Complainant’s website.
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’s registrations of its TARGET mark with the USPTO sufficiently demonstrate Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”); 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.”).
Respondent’s <targetsurplus.com> is confusingly similar to Complainant’s TARGET mark because it combines Complainant’s mark in its entirety with the word “surplus,” a generic term within the retail store industry in which Complainant conducts its business. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Respondent’s <targetsurplus.com> domain name is confusingly similar in light of its incorporation of Complainant’s well-known mark and the addition of a generic term. 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶
4(a)(ii), Complainant possesses the initial burden of demonstrating that
Respondent has no rights or legitimate interests in respect of the disputed
domain name. When Complainant
successfully proves a prima facie case, the burden shifts to Respondent
to prove that it has rights or legitimate interests in the disputed domain
name. Based upon the evidence on
record, the Panel finds that Complainant has presented a prima facie
case. See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001) (“Proving that the Respondent has no rights or legitimate interests
in respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”) Consequently, the Panel will consider whether the evidence on record
indicates that Respondent has rights or legitimate interests in accord with
Policy ¶ 4(c).
Respondent is using the <targetsurplus.com>
domain name to operate a website that diverts Internet users to competing
websites. Such competing commercial 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the
respondent was not using the domain names for a bona fide offering of
goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its
marks).
Moreover, there is nothing in the record to show that
Respondent is either commonly known by the disputed domain name or licensed to
use Complainant’s TARGET mark. Thus,
the Panel finds that Respondent has not established rights or legitimate
interests under Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
In light of the evidence
on record, Respondent’s <targetsurplus.com> domain name has
been registered and is being used in bad faith under Policy ¶ 4(b)(iv). By using the Complainant’s well-known TARGET
mark to direct consumers to a website offering similar products to Complainant,
Respondent demonstrates an intent to attract, for commercial gain, Internet
users to its website by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of its website. See 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 the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); 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).
Furthermore, the Panel finds that Respondent registered the
disputed domain name for the purpose of disrupting the business of
Complainant. Respondent’s website
directs consumers to a website offering goods that are also sold by
Complainant. Consequently, Respondent
utilizes the <targetsurplus.com> domain name to directly compete
with Complainant, which demonstrates registration and use in bad faith under
Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent
registered the domain name in question to disrupt the business of the
complainant, a competitor of the respondent).
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 <targetsurplus.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 1, 2006
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