Target Brands, Inc. v.
RareNames, WebReg
Claim Number: FA0711001109401
PARTIES
Complainant is Target Brands, Inc. (“Complainant”), represented by Rita
Sanzgiri, of Faegre & Benson LLP, 1900 Fifteenth
Street, Boulder, CO 80302-5414.
Respondent is RareNames, WebReg (“Respondent”), represented by Ann
Lamporte Hammitte, of Lowrie, Lando & Anastasi, LLP
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <targetcard.com> and <targetpromotion.com>,
registered with Domaindiscover.
PANEL
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.
Diane Cabell, Sandra J. Franklin and Beatrice
Onica Jarka as members of the Panel.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On November 15, 2007, Domaindiscover confirmed by e-mail to the
National Arbitration Forum that the <targetcard.com> and <targetpromotion.com>
domain names are registered with Domaindiscover
and that the Respondent is the current registrant of the names. Domaindiscover
has verified that Respondent is bound by the Domaindiscover
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 November 19, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 10, 2007 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@targetcard.com, and
postmaster@targetpromotion.com by e-mail.
A timely Response was received and determined to be complete on
Timely Additional Submissions were submitted by both parties, on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that:
§
It holds
numerous valid Unites States and all
over the world trademark registrations for the word TARGET alone and word
TARGET together with a Bullseye Design, as well for TARGET BUSINESS CARD;
§
It is
very active in electronic commerce;
§
The
disputed domain names are similar with Complainant’s trademarks as they
entirely appropriate Complainant’s well –known TARGET mark;.
§
Respondent
has no trademark or intellectual property rights in the disputed domain names
as it is not the licensee of Complainant nor is using the disputed domain names
in connection with a bona fide
offering of goods;
§
Respondent
has registered and has been using the disputed domain names in bad faith as it
has not been authorized by Complainant to do so and it is using <targetcard.com> to divert
Internet users to Respondent’s website and intends to sell <targetpromotion.com> for valuable consideration in excess of
Respondent’s out of pocket costs related to the domain name;
§
Respondent
has developed a pattern of bad faith registration and use of domain names
reflected in multiple administrative proceedings under URDP.
B. Respondent
The Respondent replies:
§
It
disputes that the domain names are confusingly similar with any mark in which
Complainant has exclusive rights;
§
The disputed
domain names comprise of common words, descriptive terms;
§
Respondent’s
policy is to register and maintain only
domain names that incorporate common
words or phrases, descriptive terms and/or words as to which it considers no
single party has exclusive rights;
§
<targetcard.com> registration precludes any rights of
Complainant in the TARGET BUSINESS CARD mark;
§
The
phrases “target card” and “target promotion” are by no means exclusively
associated with Complainant but are widely used for disparate purposes and
appear in numerous third party webpage unrelated to Complainant;.
§
Before
any notice of this dispute, Respondent used and in the case of <targetpromotion.com> made
preparations to use in connection to Internet advertising for particular
subjects and this represents bona fide
offering of goods and services;
§
Respondent has not registered and it is not
using the disputed domain names in bad faith, as its rights in both domain
names are senior to those of the Complainant and it was unaware of the
Complainants’ rights at registration;
§
Respondent
registered the disputed domain names because they were either expired or made
available and because they incorporate short common phrase
§
Respondent
has not registered the disputed domain names with the intent to disrupt
Complainant’s business or to confuse consumers seeking to find Complainant’s
website and it is not creating any likelihood of confusion with the business of
Complainant.
C.
In its Additional Submission, Complainant insists on the Policy elements and
claims to dismiss all the reasoning provided by Respondent, especially that
related to the priority of use.
D. By the Additional Submissions, Respondent claims that:
§
Complainant
failed to prove that its trademarks are famous;
§
Complainant
did not offer any argument as to why the priority in use of the disputed domain
names by Respondent should be dismissed;
§
Respondent
has not registered and is not using the disputed domain names in bad faith as
they are common terms and Respondent is operating a business under the disputed
domain names.
FINDINGS
The Complainant is the owner of multiple United
States Patent and Trademark Office (USPTO)
and worldwide registration of the trademark TARGET. It also holds a USPTO trademark
registration for TARGET BUSINESS CARD registered in 2005.
The disputed domain names were registered in
1999, <targetcard.com>, and in
2002, <targetpromotion.com>. As
the registration of the disputed domain names predates the registration of trademark
TARGET BUSINESS CARD, the Panel shall analyze the identity or the confusing
similarity of the disputed domain names with the TARGET trademark. The disputed
domain names are confusingly similar with the TARGET trademark belonging to the
Complainant as they comprise entirely this mark and the two added words do not
make them sufficiently distinctive from the Complainant’s trademark TARGET. The
Respondent is using the disputed domain names making a bona fide offering of goods and services either by providing
information about various cards on <targetcard.com>
or by offering for sale the disputed domain name <targetpromotion.com>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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 rights
in the TARGET mark through several registrations with the United States Patent
and Trademark Office (“USPTO”) including Reg. No. 845,193 - issued
The
Respondent’s <targetcard.com> and <targetpromotion.com>
domain names include the Complainant’s TARGET mark in its entirety, adding
the generic terms “card” and “promotion,”
and the generic top-level domain (“gTLD”) “.com.”
The Panel finds that the additional terms are insufficient to distinguish Respondent’s domain names from Complainant’s mark and that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).
In conclusion the disputed domain names are confusingly similar to Complainant’s TARGET trademark.
Complainant has established rights
in the TARGET BUSINESS CARD mark through registration with the USPTO (Reg. No.
3,018,017) on
Nevertheless the Respondent’s
registration of the disputed domain names predates Complainant’s rights in the
TARGET BUSINESS CARD mark. For this
reason the Complainant’s rights in the TARGET BUSINESS CARD mark do not satisfy
the requirements of Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily
implies that Complainant’s rights predate Respondent’s
registration . . . of the domain name”); see also B&V Assocs., Inc. v. Internet Waterway, Inc., FA 147531 (Nat. Arb. Forum
Complainant contends
that Respondent is not using the disputed domain names in connection with
either a bona fide offering of goods
or services or a legitimate noncommercial or fair use. Complainant contends that Respondent’s use of
the <targetcard.com> domain
name to resolve to a website with links to the sites of competitors and use of
the <targetpromotion.com> domain
name to resolve to a website, which offers the domain name for sale, are not bona fide offers of goods or
services. Complainant further contends
that Respondent receives commercial gain from sponsored links or pay-per-click
advertising or at least has appropriated Complainant’s TARGET mark to direct
Internet users to websites unrelated to the Complainant.
The Panel is considering the Complainant’s contentions but it cannot disregard the wide use of the terms registered by the Respondent as domain names which cannot be associated exclusively with the Complainant.
The Respondent is using the domain name <targetcard.com> in order to offer information to people looking for cards of various kinds. The information is offered through paid advertising search results provided by the Google search engine. These advertising topics are not related to any of the goods and services identified by the Complainant in its trademark registrations listed in the complaint, or to entities that might be competitors of the Complainant.
The Panel notes that
none of the trademarks listed in Attachment C to the Complaint by the
Complainant refer specifically to the sale of cards (greetings cards, thank you
cards, recipe cards, sport cards or postcards) and the trademark TARGET simple
or with BULLSEYES design, as invoked by the Complainant in the complaint, was
first registered for retail department store service in general only on August,
26, 2003 under Registration No. 2,755, 538. Moreover, the TARGET BUSINESS CARD mark was
registered with the USPTO (Reg. No. 3,018,017) on
Considering the circumstances of the case and the fact that the disputed domain name <targetcard.com> was registered in 1999, the Panel finds the activity of the Respondent under this domain name a bona fide offering of goods and services.
As to the use of the
domain name <targetpromotion.com>,
the Panel notes that the Respondent is in the business of registering and selling generic domain names as stated in the
affidavit of Erik S. Zilinek, as provided in evidence in the case, and from the
decisions given in prior UDRP cases in which the Respondent was involved.
The Complainant
invokes several UDRP decisions which were granted against the Respondent. While the Respondent may have lost other domain names in
previous cases decided under the Policy, this of itself does not warrant a
conclusion that the Respondent necessarily lacks legitimate interests in the
present case. Each case must be examined on its merits, and while a party’s
prior conduct may be a relevant factor, the few cases quoted by the Complainant
in the present proceedings are not of themselves sufficient to persuade this
Panel that Respondent has engaged in a pattern of registering domain names in
order to sell them to trademark owners or to trade off the goodwill of
trademark owners.
Moreover, there are
also UDRP decisions (See InCorp
Services, Inc. v RareNames, WebReg, FA0509000559911 (Nat.Arb. Forum
Considering also that the Complainant does not have a monopoly of any domain name with the word target in it, see Target Brands, Inc v. AdDnet Media Grp., FA 227647 (Nat. Arb. Forum Mar. 24, 2004), the Panel finds that the Respondent has rights to and legitimate interests in the domain names at issue.
As the Complainant has failed to prove the second of the three
requirements, the Panel has no need to determine further issues in order to
decide this case.
DECISION
Having considered the reasoning above, the Panel concludes that relief
shall be DENIED.
Diane Cabell, Sandra J. Franklin and Beatrice
Onica Jarka - Panelists
Dated: January 22, 2008
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