Target Brands, Inc. v. Bealo Group S.A.
Claim Number: FA0210000128684
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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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