Target Brands, Inc. v. Private Whois Service
Claim Number: FA1105001387231
Complainant is Target Brands, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, Minnesota, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetportraitstudio.com>, registered with INTERNET.BS CORP.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 4, 2011; the National Arbitration Forum received payment May 5, 2011.
On May 9, 2011, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <targetportraitstudio.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2011, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@targetportraitstudio.com. Also on May 11, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. The domain name that Respondent registered, <targetportraitstudio.com>, is confusingly similar to Complainant’s TARGET mark.
2. Respondent has no rights to or legitimate interests in the <targetportraitstudio.com> domain name.
3. Respondent registered and used the <targetportraitstudio.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands, Inc., is a wholly owned subsidiary of Target Corporation and is responsible for protection of brands it owns and licenses to Target Corporation. For the purposes of this proceeding, Target Brands, Inc. and Target Corporation will be collectively referred to as “Complainant.” Complainant has operated chains of retail discount department stores since 1962 under its TARGET mark. Complainant also offers photofinishing services and studio and portrait photography services in its stores, as well as online at <targetportraits.com>. Complainant holds numerous trademark registrations for its TARGET mark with the United States Patent and Trademark Office (e.g., Reg. No. 837,308 issued Oct. 17, 1967).
Respondent, Private Whois Service, registered the <targetportraitstudio.com> domain name November 27, 2005. The disputed domain name resolves to a directory website displaying sponsored third-party links to Complainant’s website as well as the websites of Complainant’s direct competitors offering photography services.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 asserts that it has demonstrated its rights in the TARGET mark. A Complainant validates its rights in a mark through registration with a trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Complainant is not required to register its mark within the country where Respondent resides or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Here, Complainant holds numerous trademark registrations for its TARGET mark with the USPTO (e.g., Reg. No. 837,308 issued Oct. 17, 1967). The Panel finds that Complainant demonstrated its rights in the TARGET mark, pursuant to Policy ¶ 4(a)(i), through its trademark registration.
Complainant also asserts that Respondent’s <targetportraitstudio.com> domain name is confusingly similar to its TARGET mark. The disputed domain name utilizes the entire TARGET mark and adds the descriptive words “portrait studio” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of descriptive words, which here, relate to Complainant’s photography services, do not distinguish the domain name from Complainant’s mark. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). Further, addition of a gTLD also does not prevent a finding of confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s TARGET mark under Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant urges that Respondent lacks rights and legitimate interests in the disputed domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel found that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Here, Complainant made a prima facie showing tosupport its claims. Respondent failed to submit a response to the Complaint, therefore, the Panel may interpret this as an admission that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel elects to first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant maintains that Respondent is not commonly known by the disputed domain name and that Respondent has never been licensed or permitted to use Complainant’s TARGET mark within the domain name. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <targetportraitstudio.com> domain name, according to Policy ¶ 4(c)(ii), since nothing in the record provides a basis for such a finding. 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <targetportraitstudio.com> domain name resolves to a directory website that features sponsored links to Complainant’s website and to sites in direct competition with Complainant’s photography business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to host a directory website with links to Complainant and Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s registration and use of the disputed domain name is for the primary purpose of disrupting Complainant’s business. Respondent operates a directory website with third-party links to Complainant and Complainant’s competitors offering photography services. The Panel finds that Respondent’s registration and use of the <targetportraitstudio.com> domain name does disrupt Complainant’s business, which supports findings of bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel further finds that the record supports an inference that Respondent likely receives click-through fees from the previously mentioned third-party links. Due to Respondent’s confusingly similar disputed domain name, Internet users searching online for Complainant may find Respondent’s website instead and become confused as to Complainant’s sponsorship of, or affiliation with, the resolving website or featured links. Respondent attempts to profit from this misconception by generating click-through fees. The Panel finds that Respondent’s registration and use for its own benefit constitutes bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetportraitstudio.com> domain name be TRANSFERRED/ from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 16, 2011.
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