Target Brands, Inc. v. Bobby Henderson
Claim Number: FA1109001408381
Complainant is Target Brands, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, Minnesota, USA. Respondent is Bobby Henderson (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetrewards.com>, registered with GoDaddy.com, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <targetrewards.com> 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 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@targetrewards.com. Also on September 22, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <targetrewards.com> domain name is identical to Complainant’s TARGET REWARDS mark.
2. Respondent does not have any rights or legitimate interests in the <targetrewards.com> domain name.
3. Respondent registered and used the <targetrewards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands, Inc., has operated retail discount department stores since 1962. In connection with its retail stores, Complainant promotes the sale of credit accounts through incentive award programs under its TARGET REWARDS mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its TARGET REWARDS mark (Reg. No. 2,704,437 registered April 8, 2003).
Respondent, Bobby Henderson, registered the <targetrewards.com> domain name on August 27, 2010. The disputed domain name resolves to a website featuring Complainant’s trademark and images. The resolving website purports to offer gift cards to Complainant’s stores if Internet users conduct surveys provided by Respondent. Respondent does include a disclaimer on the resolving website that states:
TARGETREWARDS.COM IS NOT AN OFFICIAL TARGET.COM SITE.
TARGETREWARDS.COM HAS NO AFFILIATION WITH TARGET.COM, TARGET BRANDS INC, TARGET REDCARDS, TARGET CREDIT CARDS, TARGET VISA CREDIT CARDS, TARGET CHECK CARDS, OR ANY REWARDS PROGRAM ASSOCIATED WITH SPENDING ON ANY OF THOSE CARDS.
ALL PRODUCTS, COMPANY NAMES, BRAND NAMES, TRADEMARKS, AND LOGOS ARE THE PROPERTY OF THEIR RESPECTIVE OWNERS.
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.
The Panel determines that Complainant has established rights in its TARGET REWARDS mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (Reg. No. 2,704,437 registered April 8, 2003). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant asserts that Respondent’s <targetrewards.com> domain name is identical to Complainant’s TARGET REWARDS mark as the only difference is the addition of the generic top-level domain (“gTLD”) “.com.” The Panel agrees with Complainant, while noting that the disputed domain name also lacks the space found in the mark, and holds that Respondent’s <targetrewards.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <targetrewards.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <targetrewards.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant asserts that Respondent is not, and has never been, a licensee of Complainant or its predecessors in interest. The WHOIS information lists “Bobby Henderson” as the registrant of the disputed domain name, which is not similar to the <targetrewards.com> domain name. Respondent has failed to present any evidence that contradicts the evidence in the record. Thus, the Panel finds that Respondent is not commonly known by the <targetrewards.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
As Complainant notes, Respondent’s <targetrewards.com> domain name resolves to a website that contains Complainant’s marks, logos, and color scheme. Respondent uses the disputed domain name to enlist Internet users in Respondent’s survey program and promises Complainant’s gift cards in return for joining. The Panel determines that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (holding that the use of a confusingly similar disputed domain name to offer a complainant’s gift cards in exchange for Internet users completing surveys is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that the “[r]espondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)” when the disputed domain name resolved to a survey website that purported to offer Internet users a gift card to the complainant’s stores).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Based on Respondent’s use of Complainant’s mark, logos, images, and color scheme at the resolving website, the Panel determines that Respondent is attempting to create confusion as to Complainant’s affiliation with the <targetrewards.com> domain name and resolving website. Respondent presumably profits from its survey program. Therefore, the Panel concludes that Respondent’s registration and use of the <targetrewards.com> domain name to profit from Internet user confusion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Privacy Protect, FA 1404667 (Nat. Arb. Forum Sept. 30, 2011) (finding Policy ¶ 4(b)(iv) bad faith registration and use when a disputed domain name resolves to a website that offers visitors gift cards in exchange for completing surveys and providing personal information).
The Panel notices that Respondent has included a disclaimer on the resolving website. However, the Panel determines that the disclaimer fails to mitigate a finding of bad faith or prove that Respondent registered and uses the <targetrewards.com> domain name in good faith under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the TARGET mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). In this case, the Panel holds that Respondent had actual notice of Complainant’s rights in the TARGET mark because the resolving website contained Complainant’s mark, logos, images, and color scheme.
The Panel finds Policy ¶ 4(a)(iii) is 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 <targetrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 24, 2011
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