Target Brands, Inc. v. Bealo Group S.A.
Claim Number: FA0210000128684
PARTIES
Complainant
is Target Brands, Inc., Minneapolis,
MN, USA (“Complainant”) represented by Eunice
P. de Carvalho, of Faegre &
Benson LLP. Respondent is Bealo Group S.A., Geneve, SWITZERLAND
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetstore.net>,
registered with Go Daddy Software.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 22, 2002; the Forum received a hard copy of the
Complaint on October 24, 2002.
On
October 23, 2002, Go Daddy Software confirmed by e-mail to the Forum that the
domain name <targetstore.net>
is registered with Go Daddy Software and that Respondent is the current
registrant of the name. Go Daddy Software has verified that Respondent is bound
by the Go Daddy Software 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
October 25, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 14, 2002 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@targetstore.net 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
December 6, 2002, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<targetstore.net> domain name is confusingly similar to
Complainant’s registered TARGET mark.
Respondent does not have any rights or legitimate
interests in the <targetstore.net> domain
name.
Respondent registered and used the <targetstore.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant,
Target Brands, Inc., holds numerous registrations for its TARGET marks (e.g.,
U.S. Reg. No. 845,193). Complainant first registered this mark on February
27, 1968 on the Principal Register of the United States Patent and Trademark
Office (“USPTO”).
Complainant uses its TARGET mark in
connection with, inter alia, its retail department stores. Since 1962,
Complainant has operated a chain of stores under the TARGET mark, today
numbering more than 1,000 stores in 46 of the 50 United States. In addition to
its registrations of the TARGET mark, Complainant also operates a presence on
the web at <target.com>, where it offers information and online shopping
services.
Respondent, Bealo Group S.A., registered
the <targetstore.net> domain name on April 28, 2002. Respondent is not licensed or otherwise
authorized to make use of the TARGET marks for any purpose. Upon arriving at
the disputed domain name, an Internet user views a page announcing that the
website is the future home of Online Shop. The website directs any questions
concerning the page to <promotechnology.com>, an adult free web host
network. Previous use of the disputed domain name included redirecting Internet
users to <erosground.com>, a website featuring sexually explicit images.
DISCUSSION
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 the 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 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 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.
Identical and/or Confusingly Similar
Complainant has established rights in its
TARGET mark through registration on the Principal Register of the USPTO along
with its widespread and continuous use of its mark in commerce. This showing is
sufficient to allow Complainant to bring its Complaint under the UDRP. See Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can
demonstrate a mark in some jurisdiction).
Respondent’s <targetstore.net> domain name is confusingly similar to
Complainant’s TARGET mark. The only difference between Respondent’s domain name
and the registered mark of Complainant is the addition of the top-level domain
“.net,” and the addition of the generic word “store”. As top-level domains are
a required feature for each domain name, the “.net” in the disputed domain name
does not prevent a finding of confusing similarity. See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity significance).
The addition of the generic word “store”
to Complainant’s mark also fails to sufficiently differentiate the disputed
domain name from the mark. The disputed domain name fully incorporates
Complainant’s TARGET mark, while the addition of the word “store” describes the
type of locale that Complainant does business from. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); 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 the <targetstore.net> domain name is
confusingly similar to Complainant’s registered TARGET mark under Policy ¶
4(a)(i).
Rights or Legitimate Interests
Complainant’s allegations that Respondent
has no rights or legitimate interests in the disputed domain name have gone
uncontested by Respondent. In such a situation, the Panel will accept all
reasonable assertions by Complainant as true. See Do the Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to
come forward to [contest complainant’s allegations] is tantamount to admitting the
truth of complainant’s assertion in this regard”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
The Panel will also consider Respondent’s
lack of a Response as evidence that it has no rights or legitimate interests in
the disputed domain name. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondents’ failure to respond can be construed as an admission that they
have no legitimate interest in the domain names); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent has used the <targetstore.net> domain name to redirect Internet users to a
pornographic website at <erosground.com>. Misdirecting Internet traffic
by utilizing Complainant’s registered mark does not equate to a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor is it an example of
legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii).
Respondent was merely attempting to capitalize on a close similarity between
its domain name and the registered mark of Complainant, presumably to gain
revenue from each Internet user redirected to the pornographic website. See 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); see also MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material where such use is calculated to mislead consumers and to tarnish
Complainant’s mark); see also AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding that use of the domain name to direct users to other,
unconnected websites does not constitute a legitimate interest in the domain
name).
Complainant has not authorized Respondent
to use its TARGET marks and Respondent’s contact information implies that it is
not “commonly known by” the name TARGETSTORE or <targetstore.net>.
In light of Respondent’s failure to offer any evidence that it has ever been
commonly known by the disputed domain name, the Panel concludes that Respondent
has no rights or legitimate interests in the disputed domain name under Policy
¶ 4(c)(ii). See 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"); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding
that Respondent is not commonly known by the mark contained in the domain name
where Complainant has not permitted Respondent to use the NOKIA mark and no
other facts or elements can justify prior rights or a legitimate connection to
the names “Nokia” and/or “wwwNokia”).
By successfully demonstrating that
Respondent has no rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(i)-(iii), Complainant shifts the burden of proof to
Respondent to produce evidence rebutting these assertions. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests in
respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and 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
Complainant that Respondent has no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist). As Respondent submitted no Response to the
Complaint, it fails to meet this burden.
Accordingly, the Panel finds that
Respondent does not have rights or legitimate interests in the <targetstore.net> domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent used the <targetstore.net> domain
name to redirect Internet users to a pornographic website. In doing so,
Respondent presumably received a commision for each user thereby redirected. In
capitalizing on the confusingly similar nature of the disputed domain name in
order to earn a profit, Respondent created a likelihood of confusion as to the
source or sponsorship of its website for commercial gain, evidencing bad faith
use and registration under Policy ¶ 4(b)(iv). See Kmart v.
Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy 4(b)(iv))); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that the association of a confusingly similar domain name with a
pornographic website can constitute bad faith).
In choosing to redirect its domain name
to a pornographic website, Respondent’s actions also served to tarnish
Complainant’s mark, thereby constituting additional evidence of bad faith use. See
Ty, Inc. v. O.Z. Names,
D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking
the domain names in question to graphic, adult-oriented websites is evidence of
bad faith); 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”).
Accordingly, the Panel finds that
Respondent registered and used the <targetstore.net>
domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <targetstore.net> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 17, 2002
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