Target Brands, Inc. v. Modern Empire Internet Ltd.
Claim Number: FA1201001425387
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Modern Empire Internet Ltd. (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yarget.com>, registered with Fabulous.com Pty. Ltd.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2012; the National Arbitration Forum received payment on January 24, 2012.
On January 19, 2012, Fabulous.com Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <yarget.com> domain name is registered with Fabulous.com Pty. Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty. Ltd. has verified that Respondent is bound by the Fabulous.com Pty. Ltd. 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 January 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2012 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@yarget.com. Also on January 25, 2012, 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 February 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
(a) Complainant Target Owns Its Marks. Complainant Target is the owner of the distinctive and world famous TARGET trademarks and their corresponding logos (the “TARGET Marks”). For many years, and long prior to the creation of the <yarget.com> domain, Complainant commenced use of the TARGET Marks in connection with the advertising, marketing and operation of retail department stores, and other products and services related thereto. Since the inception of each of the TARGET Marks, Complainant Target has continually used such Marks in interstate commerce.
(b) The TARGET Marks Are Extensively Used, Promoted and Protected. Created in Minneapolis, Minnesota in 1962 as a division of the former Dayton Hudson Corporation, Complainant is now one of the most famous brands in the field of retail department stores. Complainant currently serves customers through approximately 1,750 stores in the United States, maintains offices in Bangalore, India, and is traded on the New York Stock Exchange under the ticker symbol TGT. In its fiscal year 2009, Complainant reported revenues of US$63.4 billion.
Complainant extensively promotes its TARGET Marks through print, web, television, and trade show advertising and expends millions of dollars in this effort. Complainant has also been the subject of extensive media coverage including stories in the New York Times, The Wall Street Journal, CNN and many other outlets. Target is consistently ranked as one of the most philanthropic companies in the U.S. and has been a major benefactor of relief efforts, including monetary and product donations after the September 11th attacks in 2001, the tsunami in South Asia in 2004, and Hurricane Katrina in 2005. The recipient of a number of business awards, Target’s accolades include being named one of America’s Most Popular Stores by Forbes Magazine in 2009, receiving the “Grassroots Innovation Award” in 2010 from the Public Affairs Council for the company’s participation in the National Civic Summit, and being named, by J.D. Power and Associates, as the highest in overall customer service for mass merchandisers 4 years running (2007-2010).
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its <target.com> website. Through this domain, Complainant also provides information to current and prospective customers about the many different products it sells. As a result of Complainant’s long usage and promotion of the TARGET Marks, they have become famous and widely recognized by consumers.
The TARGET Marks are aggressively protected through registration and enforcement. Complainant Target owns many trademark registrations for the TARGET Marks, including United States Federal Trademark Registrations as follows:
Mark Goods and Services Reg. No. Reg. Date
Target IC 003 005. US 051. G & S: 0818410 November 8, 1966
Toothpaste, [ bath oil, ] deodorant
preparations for personal use [ ,
cream rinse ] and aerosol shaving
cream. FIRST USE: 19621101.
FIRST USE IN COMMERCE:
19651210
TARGET (With Logo) IC 035. US 101. G & S: Retail 0845615 March 5, 1968
department store, retail grocery
store, retail bakery, prescription
compounding and dispensing
and restaurant and snack bar
services. FIRST USE: 19620430.
FIRST USE IN COMMERCE:
19651210
TARGET IC 042. US 101. G & S: Retail 0845193 February 27, 1968
department store, retail grocery
store, retail bakery, prescription
compounding and dispensing,
and restaurant and snack bar
services. FIRST USE: 19620430.
FIRST USE IN COMMERCE:
19651210
TARGET IC 025. US 039. G & S: Men's, 1146216 January 20, 1981
women's and children's clothing-
namely, hosiery, underwear,
[ jeans, ] diapers, sleepwear,
infant plastic pants, shirts and
gloves. FIRST USE: 19620501.
FIRST USE IN COMMERCE:
19651210
TARGET (With Logo) IC 025. US 022 039. G & S: Men's, 1282569 January 19, 1984
women's and children's clothing-
namely, [ hosiery, underwear,
[ jeans ] diapers, sleepwear, infant
plastic pants, ] shirts [ and gloves ].
FIRST USE: 19720000. FIRST USE
IN COMMERCE: 19720000
TARGET (With Logo) IC 042. US 101. G & S: Retail 1386318 March 11, 1986
department store sales services,
namely, men's, women's, children's
and infants' clothing and
accessories sales services;
jewelry, clocks and watches sales
services; health and beauty aids
sales services; pharmacy and
prescription sales services; optical
supplies sales services; cigarettes
and tobacco sales services;
records and tapes sales services;
books and magazines sales
services; men's, women's, children's
and infants' shoes sales services;
furniture and rugs sales services;
food and candy sales services; trees,
plants and flowers sales services;
toys and athletic sporting goods sales
services; hobby and crafts supplies
and equipment sales services; tire,
battery, oil, antifreeze and automotive
accessory sales services; (( guns and ))
ammunition sales services; bedding,
linens, curtains and draperies sales
services; cameras, calculators and
telephone sales services; computer
hardware, software and accessories
sales services; bicycle and bicycle
accessories sales services; automotive
maintenance and repair supplies and
equipment sales services; pet equipment
and supplies sales services; giftshop,
housewares and tableware sales services;
radio, television and sound equipment
sales services; video recorders, video tape
and video game sales services; tool and
hardware sales services; fishing, boating,
camping and hunting equipment sales
services; garden, lawn and patio
equipment and supplies sales services;
stationery, office and school supplies
sales services; small electrical appliances
sales services; electrical and plumbing
maintenance and repair supplies and
equipment sales services; bakery goods
sales services; pictures, picture frames
and mirror sales services; and christmas
trees, ornaments, decorations, lights and
accessories sales services. FIRST USE:
19720000. FIRST USE IN COMMERCE:
19720000
2. Respondent’s Past Infringing Activity. At the outset, it must be noted that Respondent is a known cybersquatter and is engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. Many prior UDRP decisions involving well-known trademarks have been successfully brought against Respondent, including the following:
Case No. Domain(s) Case Name Status Decision Date
1359315 fanango.com Fandango, Inc. v. Transferred 20-Dec-2010
(NAF) fandando.com Modern Empire Internet
fanddango.com Ltd.
fantango.com
1350446 theknott.com The Knot, Inc. v. Transferred 5-Aug-2010
(NAF) thekot.com Modern Empire Internet
Ltd. c/o Administrator
and Domain
Administrator
D2007-1668 womenwithin.com Redcats USA, L.P. v. Transfer 30-Jan-2008
(WIPO) Modern Empire Internet
Ltd.
D2006-018 swarvoski.com Swarovski A.G. v. Transfer 27-Mar-2006
(WIPO) Modern Empire Internet
Ltd.
638265 wlmart.com Wal-Mart Stores, Inc. v. Transferred 16-Mar-2006
(NAF) Modern Empire Internet
Ltd.
D2003-0455 croatiaairlines.com Croatia Airlines d.d. v. Transfer 26-Aug-2003
(WIPO) Modern Empire Internet
Ltd.
126639 abcdistributing.com ABC Distributing, Inc. Transferred 13-Nov-2002
(NAF) Modern Empire Internet
aka Franky Tong
These prior decisions are highly relevant to the present case. In Target Brands, Inc. v. Guowei Hai Gui, NAF Claim No. FA1102001371811 (2011) it was held that “Respondent has been a party to [and lost] previous UDRP decisions … [and] [t]his is evidence that Respondent is a serial cyber-squatter, which in turn demonstrates that Respondent registered and uses the <tatget.com> domain name in bad faith pursuant to Policy ¶4(b)(ii).
3. Respondent’s registration of the <yarget.com> domain violates the Policy.
(a) The yarget.com Domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <yarget.com> domain is confusingly similar, on its face, to one or more of Complainant’s registered TARGET trademarks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between the Complainant’s Marks and Respondent by Respondent’s use of the <yarget.com> domain.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. For example, in DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id. See also, Christie’s Inc. v. Target’s Jewelry Auction, Inc., WIPO Case No. D2001-0075 (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using a confusingly similar copy of the Complainant’s TARGET Marks in which the letter “t” is replaced by the letter “y”, thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers discover they are not at one of Complainant’s sites, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the website of the yarget.com domain. As in Athanasios, Respondent here uses the TARGET Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the <yarget.com> domain web page and numerous links to other goods and services are also listed on that page, searchers will be confused and led to believe that, even if the goods and services are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the <yarget.com> Domain Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <yarget.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites which are not associated with Complainant and, in some cases, are associated with Complainant’s competitors such as Kohls department store. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Respondent is not commonly known by the <yarget.com> domain or the name TARGET and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by any of Complainant’s Marks, nor does Respondent operate a business or other organization under such marks or names and does not own any trademark or service mark rights in these names. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <yarget.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the <yarget.com> domain to confuse and misleadingly divert consumers, or to tarnish the Marks of the Complainant. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s various goods and services, who found the <yarget.com> domain, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. Such use cannot be considered fair. See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.”)
Lastly, Respondent’s use has tarnished and diluted the TARGET Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by the Complainant by using the Marks in association with a directory site which provides links to numerous products and services not associated with or related to the Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services linked to directory sites over which Complainant has no quality control.
(c) Respondent Registered The <yarget.com> Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the TARGET Marks without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in its Marks through Complainant’s extensive prior use of the Marks as well as its various trademark registrations, which long predate the creation date of the <yarget.com> domain. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the TARGET Marks in violation of Complainant’s rights in its Marks. Moreover, the content on Respondent’s website at the <yarget.com> domain reveals that Respondent has actual knowledge of the Marks and Complainant’s goods associated with each and is purposefully trading on the Marks.
Even after Complainant sent a demand letter to Respondent on September 16, 2011 and a follow-up letter on January 6, 2012, Respondent remained silent and continued to operate its infringing website
Respondent is obtaining commercial gain from its use of the website at the <yarget.com> domain. This is a directory or “pay-per-click” website providing a listing of hyperlinks, some of which lead to Complainant’s websites and some to the websites of Complainant’s competitors such as Kohls department store. Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the website of the <yarget.com> domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the directory site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, D2007-1211 (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein the respondent registered the domain name <allaincebernstein.com>, which was indisputably identical to the complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial website via these links and found that the respondent’s use was for commercial gain and was in bad faith under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, D2007-1211. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its operation of a pay-per-click site under the <yarget.com> domain alone constitutes commercial gain. See AllianceBernstein, D2008-1230. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by placing links to competitors of Complainant and other individuals, groups or entities on its website. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the web pages of the <yarget.com> domain. Respondent’s use of this domain name is commercial because the various companies linked to the directory sites of the <yarget.com> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <yarget.com> domain, Respondent is entirely and solely responsible for the content of its website. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”
Finally, as more fully set forth above, Respondent’s bad faith is demonstrated by its intentional use of the TARGET Marks in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s Marks. See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation. Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <yarget.com> domain in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Target Brands Inc. uses its TARGET mark in connection with the advertising, marketing, and operation of retail department stores. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TARGET mark (e.g., Reg. No. 818,410 registered November 8, 1966).
Respondent Modern Empire Internet Ltd. registered the <yarget.com> domain name on October 29, 2006. The disputed domain name resolves to a website hosting a variety of third-party hyperlinks, including hyperlinks resolving to Complainant’s competitors’ websites.
Respondent has been a respondent in prior UDRP proceedings in which the panels ordered the transfer of the disputed domain names to the respective complainants. See Fandango, Inc. v. Modern Empire Internet Ltd., FA 1359315 (Nat. Arb. Forum Dec. 20, 2010); see also Knot, Inc. v. Modern Empire Internet Ltd., FA 1350446 (Nat. Arb. Forum Aug. 5, 2010); see also Redcats USA, L.P. v. Modern Empire Internet Ltd., D2007-1668 (WIPO Jan. 30, 2008); see also Swarovski A.G. v. Modern Empire Internet Ltd., D2006-0148 (WIPO Mar. 27, 2006); see also Wal-Mart Stores, Inc. v. Modern Empire Internet Ltd., FA 638265 (Nat. Arb. Forum Mar. 16, 2006); see also Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 26, 2003); see also ABC Distrib., Inc. v. Modern Empire Internet, FA 126639 (Nat. Arb. Forum Nov. 13, 2002).
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 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.
Policy ¶4(a)(i) requires a complainant to demonstrate a disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights.
The first prong of this Panel’s Policy ¶4(a)(i) analysis requires the Panel to determine if Complainant owns rights in its TARGET mark. Previous panels have held a complainant may demonstrate rights in a mark by providing the panel with evidence of a USPTO trademark registration. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”); see also 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). Complainant includes with its Complaint copies of its trademark registrations with the USPTO for its TARGET mark (e.g., Reg. No. 818,410 registered November 8, 1966). In this case, Respondent does not reside or operate in the United States. However, past panels have further held a complainant is not required to register a trademark 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). In accordance with this precedent, the Panel finds Complainant has rights in its TARGET mark under Policy ¶4(a)(i).
The second prong of Policy ¶4(a)(i) instructs the Panel to determine whether Respondent’s <yarget.com> domain name is identical or confusingly similar to Complainant’s TARGET mark. Prior panels have found a domain name containing a common misspelling of a complainant’s mark, along with the addition of a generic top-level domain (“gTLD”), is confusingly similar to the complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also 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.”). In the <yarget.com> domain name, Respondent replaces the letter “t” with the letter “y” in Complainant’s TARGET mark and adds the gTLD “.com.” Consequently, the Panel concludes Respondent’s <yarget.com> domain name is confusingly similar to Complainant’s TARGET mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Policy ¶4(a)(ii) requires a complainant to demonstrate the respondent lacks rights and legitimate interests in respect of the disputed domain name. In order to demonstrate rights and legitimate interests, Policy ¶4(c) provides three non-exclusive and non-exhaustive ways to show respondent’s rights:
(i) respondent is making a bona fide offering of goods or services;
(ii) respondent is commonly known by the disputed domain name; or
(iii) respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant claims Respondent does not have any rights or legitimate interests in the <yarget.com> domain name. Previous panels have held the burden shifts to the respondent to prove it has rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held a respondent’s failure to respond to the Complaint allows the Panel to infer the respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Out of an abundance of caution, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶4(c).
The Panel first determines whether or not Respondent is commonly known by the <yarget.com> domain name. Prior panels have concluded a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name and the respondent fails to present any evidence in support of a commonly–known-by finding. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Respondent never responded to the Complaint in this case and therefore has not presented any evidence it is commonly known by the <yarget.com> domain name. The WHOIS information identifies “Modern Empire Internet Ltd.” as the registrant of the <yarget.com> domain name. Based on Respondent’s failure to present evidence and the WHOIS information, the Panel holds Respondent is not commonly known by the <yarget.com> domain name pursuant to Policy ¶4(c)(ii).
The Panel next determines if Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <yarget.com> domain name. Previous panels have maintained a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use when the respondent uses the disputed domain name to resolve to a parked website containing hyperlinks to a complainant’s competitors. 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 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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)). Respondent uses the <yarget.com> domain name to resolve to a website which solely hosts third-party hyperlinks, including hyperlinks to the websites of Complainant’s competitors. Therefore, the Panel concludes Respondent does not make a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the <yarget.com> domain name under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Policy ¶4(a)(iii) requires a complainant to demonstrate a respondent registered and uses a disputed domain name in bad faith. Policy ¶4(b) establishes four different non-exhaustive avenues for a complainant to demonstrate respondent’s bad faith registration and use:
(i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs;
(ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name;
(iv) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or
(v) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
Complainant presents no evidence or allegations under Policy ¶4(b)(i) so that provision need not be analyzed.
Policy ¶4(b)(ii) instructs the Panel to examine whether or not Respondent registered and uses the disputed domain name as a part of a pattern. Past panels have held prior UDRP proceedings involving a respondent in which disputed domain names were transferred to the respective complainants were evidence of bad faith registration and use under 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). This Respondent has been a respondent in multiple prior UDRP proceedings in which the panels ordered the disputed domain names transferred to the respective complainants. See Fandango, Inc. v. Modern Empire Internet Ltd., FA 1359315 (Nat. Arb. Forum Dec. 20, 2010); see also Knot, Inc. v. Modern Empire Internet Ltd., FA 1350446 (Nat. Arb. Forum Aug. 5, 2010); see also Redcats USA, L.P. v. Modern Empire Internet Ltd., D2007-1668 (WIPO Jan. 30, 2008); see also Swarovski A.G. v. Modern Empire Internet Ltd., D2006-0148 (WIPO Mar. 27, 2006); see also Wal-Mart Stores, Inc. v. Modern Empire Internet Ltd., FA 638265 (Nat. Arb. Forum Mar. 16, 2006); see also Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 26, 2003); see also ABC Distrib., Inc. v. Modern Empire Internet, FA 126639 (Nat. Arb. Forum Nov. 13, 2002). Thus, the Panel finds Respondent engaged in bad faith use and registration as defined in Policy ¶4(b)(ii).
While Complainant does not allege bad faith registration and use under Policy ¶4(b)(iii), Policy ¶4(b)(iii) still allows the Panel to find bad faith registration and use if Complainant provides evidence Respondent’s registration and use disrupts Complainant’s business. Prior panels have concluded a respondent’s registration and use of a disputed domain name to provide a parked website containing hyperlinks to a complainant’s competitors disrupts a complainant’s business. 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”). Complainant argues Respondent registered and uses the <yarget.com> domain name to host competing hyperlinks. Based on UDRP precedent and Respondent’s hosting of competing hyperlinks, the Panel infers Complainant’s business is disrupted and concludes Respondent registered and uses the <yarget.com> domain name in bad faith pursuant to Policy ¶4(b)(iii).
Policy ¶4(b)(iv) instructs the Panel to find bad faith registration and use if Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Previous panels have maintained a respondent’s registration and use of a disputed domain name to resolve to a parked website featuring hyperlinks to a complainant’s competitors is evidence the respondent is attempting to commercially gain from Internet user confusion. See 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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Complainant claims, and the Panel accepts, Respondent profits from the hyperlinks found on the resolving website by receiving click-through fees. As Respondent chose the confusingly similar disputed domain name and commercially benefits from the aforementioned hyperlinks, the Panel holds Respondent attempts to commercially benefit by creating confusion as to Complainant’s affiliation with the <yarget.com> domain name, constituting bad faith registration and use under Policy ¶4(b)(iv).
While not a specific provision of Policy ¶4(b), past panels have concluded that actual knowledge of a complainant’s mark can indicate bad faith registration, but constructive knowledge does not demonstrate bad faith registration. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends it is inconceivable Respondent could have registered the <yarget.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark because of the Target mark’s fame. This Panel here finds arguments of bad faith based on constructive notice are not persuasive because UDRP case precedent declines to find bad faith as a result of constructive knowledge. The Panel agrees with Complainant Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <yarget.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: February 22, 2012
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