Target Brands, Inc. v. Thanart Chamnanyantarakij
Claim Number: FA1108001405420
Complainant is Target Brands, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, Minnesota, USA. Respondent is Thanart Chamnanyantarakij (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetgiftregistry.net>, registered with GoDaddy.com, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2011; the National Arbitration Forum received payment on September 1, 2011.
On August 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <targetgiftregistry.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@targetgiftregistry.net. Also on September 1, 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 September 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" 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. Respondent’s <targetgiftregistry.net> domain name is confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <targetgiftregistry.net> domain name.
3. Respondent registered and used the <targetgiftregistry.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands, Inc., operates a chain of retail discount department stores. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 845,193 registered February 27, 1968;
Reg. No. 845,615 registered March 5, 1968; &
Reg. No. 1,386,318 registered March 11, 1986.
Respondent, Thanart Chamnanyantarakij, registered the <targetgiftregistry.net> domain name on May 8, 2010. The disputed domain name directs Internet users to a website with sponsored listings for Complainant’s wedding registry, as well as the registries of Complainant’s competitors.
Respondent has previously been the respondent in two other domain name proceedings in which the disputed domain names were transferred to the respective complainants. See Jackson Nat’l Life Ins. Co. v. Chamnanyantarakij, D2010-0878 (WIPO July 28, 2010); see also Comerica Inc. v. Chamnanyantarakij, D2011-0708 (WIPO May 26, 2011).
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. 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 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 owns multiple trademark registrations with the USPTO:
Reg. No. 845,193 registered February 27, 1968;
Reg. No. 845,615 registered March 5, 1968; &
Reg. No. 1,386,318 registered March 11, 1986.
The Panel finds these USPTO trademark registrations conclusively prove Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). The Panel finds these USPTO registrations are sufficient, even though Respondent is in Thailand and not the U.S. 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 the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <targetgiftregistry.net> domain name is confusingly similar to Complainant’s TARGET mark. The disputed domain name consists of the TARGET mark combined with the descriptive terms “gift” and “registry” and the generic top-level domain (“gTLD”) “.net.” In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), and Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), prior panels held that the addition of terms related to the complainant’s business failed to sufficiently differentiate the disputed domain name from the mark. A past panel has also determined that the presence of an attached gTLD does not affect the essential character of the disputed domain name in relation to the confusingly similar analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Accordingly, the Panel finds that Respondent’s <targetgiftregistry.net> domain name is confusingly similar to Complainant’s TARGET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant puts forth a prima facie case, the burden shifts to Respondent to demonstrate it does have rights and legitimate interests according to Policy ¶ 4(a)(ii). Due to Complainant’s sufficient prima facie case in these proceedings and Respondent’s subsequent failure to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel, however, elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not a licensee of Complainant. The WHOIS information also does not reflect any association between Respondent and the disputed domain name as it identifies the registrant as “Thanart Chamnanyantarakij.” Based on these facts, the Panel concludes that Respondent is not commonly known by, and does not have rights and legitimate interests in, the <targetgiftregistry.net> domain name under Policy ¶ 4(c)(ii). The Panel is supported in its decision by Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), and Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), which held that without authorization by complainant or corroborating evidence in the WHOIS information, a respondent was not commonly known by the disputed domain name.
Complainant contends that Respondent uses the <targetgiftregistry.net> domain name to display links to Complainant’s registry, as well as the registries of Complainant’s competitors. The Panel finds that operating a pay-per-click link web page under Complainant’s mark to conduct Internet users to 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 according to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Nw. Free Cmt. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has engaged in a pattern of bad faith domain name registration because it has previously been the respondent in two other domain name proceedings in which the disputed domain names were transferred to the respective complainants. See Jackson Nat’l Life Ins. Co. v. Chamnanyantarakij, D2010-0878 (WIPO July 28, 2010); see also Comerica Inc. v. Chamnanyantarakij, D2011-0708 (WIPO May 26, 2011). The Panel concludes that a history of adverse UDRP proceedings involving Respondent is sufficient to show a bad faith pattern of registration and use according to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Complainant argues that Respondent’s use of the <targetgiftregistry.net> domain name to direct Internet users to a search portal featuring links to Complainant and its competitors is primarily for the purpose of disrupting Complainant’s business. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panel found that similar resolving websites that consisted of a collection of pay-per-click links to the complainant’s competitors demonstrated bad faith registration and use. The Panel holds consistently here that Respondent’s activities at the <targetgiftregistry.net> domain name reveal Policy ¶ 4(b)(iii) bad faith registration and use.
Complainant alleges that Respondent’s inclusion of the TARGET mark in the <targetgiftregistry.net> domain name and the display of the TARGET bulls eye logo on the resolving website are intended to attract Complainant’s customers and make them think that they are visiting a website sponsored by Complainant. These misdirected Internet users presumably benefit Respondent commercially by generating “click-through” fees when they click on any of the links located on Respondent’s resolving website. The Panel finds Respondent’s efforts to lead Internet users to Respondent’s resolving website under false pretenses in order to receive commercial gain demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also 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).
Complainant also asserts that Respondent had both constructive and actual knowledge of Complainant’s mark prior to its registration of the disputed domain name. Complainant argues that Respondent had constructive notice due to the distinctive and famous nature of the TARGET mark. Complainant further alleges that Respondent has shown it also had actual knowledge of Complainant’s mark by including the logo on the resolving website and referencing Complainant on the resolving website by stating, “Target is one of the most popular department stores located across the country in almost every state” and “a new couple will most certainly need everything for the house . . . all of which can be included in the Target Gift Registry . . . .” While panels have previously found that constructive knowledge is insufficient, the Panel agrees with Complainant that Respondent has shown it had actual notice of Complainant’s mark, which is evidence of bad faith under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetgiftregistry.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 6, 2011
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