Target Brands, Inc. v. Dmitri Romanov
Claim Number: FA0304000156249
Complainant is Target Brands, Inc., Minneapolis, MN, USA (“Complainant”) represented by Ann Dunn Wessberg of Faegre & Benson LLP. Respondent is Dmitri Romanov, Chelyabinsk, Russian Federation (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetstore.biz> 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 29, 2003; the Forum received a hard copy of the Complaint on April 29, 2003.
On April 29, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <targetstore.biz> 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 April 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 20, 2003 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 email@example.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 Forum transmitted to the parties a Notification of Respondent Default.
On May 28, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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." 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 makes the following assertions:
1. Respondent’s <targetstore.biz> domain name is confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <targetstore.biz> domain name.
3. Respondent registered and used the <targetstore.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides evidence of two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TARGET mark (Reg. No. 845,193 registered on February 27, 1968 and Reg. No. 1,386,318 registered on March 11, 1986) in relation to retail department stores. Complainant operates an informational and online shopping website at <target.com>.
Respondent registered the <targetstore.biz> domain name on November 7, 2001. Respondent is using the disputed domain name to divert Internet users to a website that presents a number of advertisements, including a link to a pornographic website, <erosground.com>.
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.
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 has established that it has rights in the TARGET mark through registration with the USPTO and continuous use in commerce since 1962. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).
Respondent’s <targetstore.biz> domain name is confusingly similar to Complainant’s mark because the disputed domain name appropriates Complainant’s mark and adds the generic term “store” to the end of the mark. The addition of a generic term to a famous mark does not significantly differentiate the domain name from the mark under Policy ¶ 4(a)(i), especially when the generic term directly relates to the mark holder’s business. 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 Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has not submitted a Response to the Complainant’s allegations. Thus, the Panel may accept all of the reasonable allegations and inferences in the Complaint as true. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
Moreover, because of Respondent’s failure to answer the allegations of the Complaint, the Panel presumes that Respondent lacks any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent is using the <targetstore.biz> domain name to redirect Internet traffic to a portal website that features several advertisements, including a link to a pornographic website, <erosground.com>. Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services with regard to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use with regard to Policy ¶ 4(c)(iii), because Respondent is diverting Internet users to its website for commercial gain. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).
Furthermore, Respondent has presented no evidence and there is no indication in the record that suggests Respondent is commonly known by either TARGET STORE or <targetstore.biz>. Thus, Respondent has failed to establish that it has rights to or legitimate interests in the <targetstore.biz> domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <targetstore.biz> domain name to divert Internet users to a website that provides links to a pornographic website, <erosground.com>. The use of a domain name confusingly similar to a registered trademark to redirect Internet traffic to a pornographic website is itself evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).
The Panel presumes that Respondent is benefiting commercially from its diversion of Internet users to the <targetstore.biz> website because the website contains advertisements and pornographic content. This use indicates an attempt to attract Internet users to Respondent’s website for its commercial gain by creating a likelihood of confusion with Complainant’s mark, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetstore.biz> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 2, 2003
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