Target Brands, Inc. v. Quinv S.A. / Korchia Thibault
Claim Number: FA1205001442068
Complainant is Target Brands, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre Baker Daniels, LLP, Minnesota, USA.
Respondent is Quinv S.A.(“Respondent”), represented by Paul Keating of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <taget.com> (the “Domain Name”), registered with EuroDNS S.A.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:
Clive Elliott (chair);
Hon James A. Carmody; and
Diane Cabell.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2012; the National Arbitration Forum received payment on May 3, 2012.
On May 3, 2012, EuroDNS S.A confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with EuroDNS S.A and that Respondent is the current registrant of the Name. EuroDNS S.A has verified that Respondent is bound by the EuroDNS S.A 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 May 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@taget.com. Also on May 3, 2012, 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.
A timely Response was received and determined to be complete on May 23, 2012.
On May 29, 2012 Complainant submitted Additional Submissions.
On May 30, 2012, pursuant to Complainant's request to have the dispute decided by a three member Panel, the National Arbitration Forum appointed Clive Elliott, Hon James A. Carmody and Diane Cabell as Panelists.
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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a wholly owned subsidiary of Target Corporation (“Target”), and is responsible for protection of brands it owns and licenses to Target Corporation and its various divisions.
Complainant asserts that the Target Stores division of Target, a licensee of Complainant, has since operated a chain of TARGET retail discount department stores since 1962, and which number more than 1,700 stores across the United States.
Complainant contends that over the years, Target, TARGET stores, and Target’s other commercial undertakings have developed a national reputation for quality and value, which reputation is reflected in the substantial and valuable body of goodwill symbolized by the well-known TARGET mark.
Complainant states that it holds numerous valid United States trademark registrations for the word TARGET alone, for the combination of the word TARGET and the Bullseye Design and for numerous other marks that include the word TARGET (collectively the “Target Marks”).
Complainant asserts that internationally it holds valid registrations or has pending trademark applications for the TARGET Marks covering over 60 countries, as well as numerous registrations in the European Union that cover Luxembourg, where the Respondent is located.
Complainant states that it is very active in electronic commerce, operating an informational and on-line shopping site at <target.com>, which web site features a wide variety of consumer products, gift cards, gift registries and lists, photo services, and pharmacy products and services.
Complainant asserts that the TARGET Marks are commercial icons that have been extensively used and advertised for many years and as a result, the TARGET Marks enjoy a high degree of recognition with the public in the United States. Complainant contends that from 2001 through 2006, an on-line survey by Brandchannel.com showed that the TARGET brand was one of the brands having the most impact on people’s lives in the United States and Canada (ranking in top ten brands for each year). Complainant submits that as a result of its continuous use and extensive advertising promotion, including nationwide television campaigns, the TARGET Marks are known, among other places, throughout the United States as identifying Complainant’s exclusive licensee as a source of quality retail services.
Complainant asserts that it closely controls the use and reproduction of the TARGET Marks to ensure that all of Target Stores’ current and potential customers can rely upon the marks as a symbol of high quality products and services.
Complainant asserts that Respondent registered the Domain Name on or about April 14, 2009 which Complainant submits is long after Complainant had extensively used and obtained trademark registrations for the TARGET Marks in U.S., the European Union, and other jurisdictions around the world.
Complainant contends that Respondent is using the Domain Name to re-direct Internet users to Complainant’s own website. It understands that if an Internet user enters “taget.com” into a web browser the user is re-directed to a URL that re-directs to another URL that re-directs to another URL and eventually ends up at the URL, which is at Complainant’s own site. Complainant submits that Respondent or someone associated with Respondent is attempting to obtain commercial gain through click-through fees by redirecting traffic to Complainant’s site, which is in violation of Complainant’s affiliate agreement.
Complainant states that Respondent is not, and has never been a licensee of Complainant or its predecessors in interest and is not affiliated with Complainant in any way.
Complainant contends that the Domain Name is a misspelling of Complainant’s TARGET mark and is confusingly similar to Complainant’s mark. The misspelling occurs by the omission of the letter “r” from Complainant’s TARGET mark and <target.com> domain, which Complainant submits is a common typographic error.
Complainant submits that Respondent has intentionally registered the Domain Name, containing a misspelled version of Complainant’s mark, in order to capture unknowing Internet users who make typing mistakes when searching for Complainant. Complainant further submits that under these circumstances, Respondent lacks any valid rights or legitimate interests in the Domain Name.
Complainant contends that at the time Respondent registered the Domain Name, the TARGET Marks were sufficiently distinctive or famous to give constructive notice to Respondent that the registration of the Domain Name would violate Complainant’s rights. Complainant further contends that Respondent also has actual knowledge of Complainant’s rights, and that such actual knowledge is demonstrated by the fact that Respondent is using the Domain Name to redirect Internet users to Complainant’s own site at <www.target.com>.
Complainant asserts that Respondent has engaged in typosquatting, wherein Respondent has registered a common misspelling of Complainant’s famous TARGET mark and <target.com> domain name to divert Internet traffic to its own website for commercial gain, and as such typosquatting is recognized as evidence of bad faith use and registration.
B. Respondent
Respondent argues that Complainant erroneously claims that its trademark registrations for “Target” provides it with a universal trademark to the term “Taget” and that use of the term in connection with any subject matter is prohibited under the Policy.
Respondent notes that Complainant is a US entity which has always maintained operations exclusively in the United States, and although there have been announcements that Complainant would be expanding to Canada, such announcements came in late 2011 and there has been no evidence that the expansion has actually occurred or that Complainant has begun any business operations outside of the US.
Respondent further notes that Complainant does not have any store locations in Europe and to the best of Respondent’s knowledge does not do business in the EU. Respondent claims that Complainant’s evidence points only to popularity in the United States and Canada, and no evidence is provided as to popularity or fame anywhere else in the world.
Respondent states that it is a small one-employee company located in Luxembourg, that does not do business in the US (or Canada).
Respondent denies the allegation that the Domain Name is a “typo” of Complainant’s trademark, and submits that the word Tåget refers to “train” in Swedish. Respondent contends that a Google search of the word Taget results in over 8.1 MILLION references, and submits that none of which appear to have anything to do with Complainant.
Respondent asserts that the word “taget” has several meanings, most of which are associated with “touch” (latin) and in Swedish, the word means “touched”, “moved” or “affected.” Respondent claims that Google translates the term to “time,” also in Swedish and in Danish the word has a variety of meanings including foggy (as in meteorology), taken, and when combined as a phrase to form “strengt taget” translates to “strictly speaking.”
Respondent states that it is not a “professional” domainer and presumed that placing the Domain Name with SEDO and other monetizing providers would result in a directory page contextually related to the actual use of the word.
Respondent states that it cannot contest the trademark registrations asserted by Complainant; however, it does question the fact that Complainant does not distinguish as between registrations and applications, and asserts that applications are not trademarks and are not sufficient to support a claim under the Policy. Respondent further asserts that Complainant is apparently relying on trademark applications in order to bolster its claim that registration was undertaken in bad faith, which it submits it is improper.
Respondent further questions the validity of the asserted trademarks and applications when Complainant does not do business in the European Union or in the countries in which the trademark registrations are asserted.
Respondent argues that the test for whether a mark is identical or confusingly similar is based entirely upon a text comparison of the asserted trademark versus the domain name, and for the purpose of this element panelists limit the inquiry to whether the Domain Name itself is, from a visual or phonetic standpoint, identical or confusingly similar to the complainant’s marks.
Respondent claims that the asserted mark is not identical or confusingly similar, and the fact that the Domain Name differs by only one letter (an “r”) does not make it identical any more than Night is identical to Knight. Respondent goes on to state that they differ in sound (tag-et) versus “tar-get,” and they also differ in meaning, where the word “Target” is defined as “an object, usually marked with concentric circles, to be aimed at in shooting practice or contests” or a “goal” or “objective.”
Respondent argues that the overall impression to the general Internet public is distinct, in that people do not look at “taget” and automatically think of Complainant, and Respondent points out there are over 8.1 Google references for Tåget, and none of the results seemingly pertain to Complainant. Respondent goes on to argue that because such public recognizes “target” does not mean that they would automatically presume that the Domain Name was a typo of Complainant’s trademark and thus call Complainant to mind.
Respondent denies Complainant’s allegations that the Domain Name was used to direct traffic to Complainant’s own website and says that it has no such knowledge and has not been able to duplicate such results. Respondent states that it is not an “affiliate” of Complainant and has never signed up for any program with Complainant, nor has it ever received any money or other consideration from Complainant.
Respondent claims that it has verified that the Domain Name has not been used to “target” Complainant and whilst it does not retain historical copies of websites involving its domain names, it attached to its submissions a copy of the current website to which the Domain Name resolves. Respondent points out that the website shows a general wide-ranging set of results and notes that the word “TAGET” does not automatically lend itself to anything specific. Respondent thus submits that the results are thus not lacking in legitimacy.
Respondent states that it did not register the Domain Name with Complainant’s trademark in mind, and that it acquired the Domain Name along with others in 2009. Respondent claims that the Domain Name was of interest because it was short; consisting of only 5-characters and claims that short domain names are inherently valuable as virtually every 4 & 5-letter character string has been registered. Respondent asserts that the Domain Name also held a defined meaning in multiple languages which added to its attraction.
Respondent denies that it or its employee had any specific knowledge of Complainant or otherwise had Complainant or its trademark in mind in 2009 when it decided to acquire the Domain Name. Respondent notes that at the time, Complainant had no stores in Europe and in fact had no trading presence outside of the United States, and further notes that Complainant still has no stores anywhere outside of the US and possibly Canada.
Respondent submits that it did not register the Domain Name to sell it to Complainant or its competitors or to preclude Complainant from reflecting its asserted marks in a domain name. Respondent points out that there have been no offers or communications in which Respondent sought to sell the Domain Name to anyone.
Respondent asserts that the Domain Name is a descriptive dictionary term and was registered in good faith, having been acquired in 2009, and further states that the Domain Name was first registered in 2000 and had a long and non-confrontational history of use in PPC.
C. Additional Submissions
Complainant notes that after the filing of the Complaint, the “Domain Name” no longer redirects, through affiliate links, to Complainant’s own website, however, at the time of the Additional Submission, the website affiliated with the Domain Name contains sponsored links to retailers such as Toys R Us, Disney Store, and SaleStores.com, all online retailers based out of the United States. Complainant submits that such current use, while different than the use at the time the Complaint was filed, continues to constitute bad faith.
Complainant denies Respondent submissions that TARGET and TAGET are not confusingly similar because they differ by a single letter and submits that the marks are similar in sight because they both start with “TA” and end with “GET.” Complainant further submits that the marks are similar in sound because they begin with the identical beginning and ending sounds, and the only difference in this case is the letter “R” in the middle of the word. Complainant points out that as evidence of the similarities, upon typing “taget.com” into a Google search engine, it automatically recognizes that the user likely intended to search for target.com and returns the results for “Target.com” instead, and that if a user enters “taget” into an online dictionary of misspelled words, <dumbtionary.com>, it returns the word “target,” which <dumbtionary.com> states is an educated guess based on commonly misspelled words.
Complainant notes that Respondent claims that its legitimate interest is that the Domain Name contains five letters and has a generic or descriptive meaning in many languages, and further notes that Respondent does not dispute that “Taget” has no meaning in English. Complainant contends that the websites associated with the Domain Name are in English (or at least are in English to users in the United States and submits therefore that any alleged “legitimate” interest cannot be based on the meaning of “Taget” in any other language or use of the Domain Name to display results that relate to the generic or descriptive meaning of “Taget” in any other language.
Complainant notes that Respondent is purporting that it is a small-time, unsophisticated, innocent user of a domain name that it registered without any knowledge or regard to Complainant, and that it attempts to avoid any responsibility for the use of the Domain Name by claiming, “Respondent is not a ‘professional’ domainer and presumed that placing the domain name with SEDO and other monetizing providers would result in a directory page contextually related to the actual use of the word.” Complainant argues that this is a ruse, because Respondent claims on its own website at <www.quinv.com> that they are “Domain Investors” and “Domain Experts.”
Complainant contends that whether it was Respondent, Sedo, one of Sedo’s ad providers, or another monetizing provider that was misusing Complainant’s affiliate program and redirecting the Domain Name to target or currently displaying pay-per-click links (in English) to U.S. online retailers is not the issue, and that the issue is that the Domain Name was and is still being used in bad faith. Complainant submits that Respondent cannot pass such bad faith off to others and points out that it is well settled that the owner of a domain registration is responsible for the posted content even when it is “parked” with others.
Complainant disputes Respondent’s submissions that this is the first time it ever heard of Complainant and the first time it ever knew that there could be a problem with the Domain Name. Complainant denies Respondent’s submissions that the Domain Name had a long and non-confrontational history and that there was nothing that would have placed Respondent on notice that it was targeting Complainant. Complainant asserts that on April 20, 2009, after Respondent first registered the Domain Name, Complainant contacted Respondent by letter, regarding the registration of the Domain Name and use and relies upon an exchange between the parties.
Complainant submits that Respondent had constructive, if not actual, knowledge of Complainant’s trademark rights in the U.S. and in the European Union at the time Respondent registered the Domain Name, and it had actual knowledge of Complainants rights at the time it (or its providers) began redirecting the Domain Name to Complainant’s own website <www.target.com> and before it (or its providers) began using the Domain Name to feature the present pay-per-click links to U.S. retailers. Complainant contends that accordingly, the Domain Name was registered and is being used in bad faith.
For the reasons set out below Complainant has failed to establish all three elements required under the ICANN Policy. Accordingly, relief is denied.
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."
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.
Respondent concedes that Complainant holds trademark registrations for the TARGET mark. Respondent claims that Complainant relies on its trademark applications, rather than its registrations, presenting its case in the proceeding and that this is improper because mere applications are insufficient for this purpose. However, Complainant holds valid registrations in both the United States and the European Union that predate Respondent’s registration of the Domain Name. Respondent also questions the validity of Complainant’s OHIM trademark registration, as Respondent argues that Complainant does not do business in the European Union. The Panel notes, however, that the determination of whether or not a trademark has been validly issued is outside the scope of the UDRP. The Panel therefore concludes that Complainant has rights in its TARGET mark under Policy ¶ 4(a)(i).
Respondent argues that the Domain Name is not confusingly similar to Complainant’s TARGET mark because the Domain Name and the mark differ both phonetically and in meaning. Respondent asserts that “taget” means “train” in Swedish. Respondent further argues that the notoriety which Complainant’s mark has achieved is limited to the United States and Canada and that a majority of the global population would not associate the Domain Name with Complainant’s TARGET mark.
However, the Domain Name simply omits the “r” from Complainant’s mark and this does not create a distinct mark or defeat a claim of confusing similarity. On this basis the Panel finds that neither of these alterations to Complainant’s mark, individually or cumulatively, serve as the basis for the creation of a distinct, non-confusingly similar domain name under Policy ¶ 4(a)(i).
Respondent argues that “the registration of generic/descriptive domain names is legitimate” and that the use of such a domain name to house a site providing information related to general, non-targeted results is a legitimate use.
Respondent concedes that such cases have typically referenced a domain name being used in the context of some descriptive meaning, but Respondent argues that the Domain Name carries a wide array of meanings based upon an Internet user’s language and culture. The Panel finds this argument less than convincing.
Respondent denies being a part of Complainant’s affiliate program and claims to have never received any consideration from Complainant as part of such a program. Respondent further asserts that it does not keep record of the Domain Name’s past uses, but Respondent claims the Domain Name currently resolves to something other than Complainant’s site.
The Respondent has failed to produce any actual evidence refuting Complainant’s allegation that the Domain Name resolved to Complainant’s website at some point in the past. Nevertheless, Complainant has failed to provide sufficient evidence linking the alleged use of the Domain Name to specific pages on its own website. In particular, Complainant has not exhibited the pages on the <taget.com> site that it claims lead to its products - only what Complainant asserts is the result after following certain deep links. However, both the relevant exhibit relied upon by Complainant (Exhibit J) and the link cited in the complaint itself refers to the deeply-linked page. As far as the Panel is able to ascertain, nothing on Respondent’s current site appears to relate to Complainant's goods or services. Thus, even if Complainant is correct in its assertion concerning the alleged chain of links, it fails to provide sufficient evidence that all these links were under the control of Respondent.
The Panel therefore holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
The Panel finds that Complainant fails to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the Domain Name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii).
The Panel having concluded that Complainant has failed to establish that Respondent has no rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), also finds that Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the Domain Name).
The Panel further finds that Respondent has not registered or used the Domain Name in bad faith as it has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Respondent contends that it did not register the Domain Name with the intention to sell it to Complainant or a competitor of Complainant. The Panel notes that Complainant does not allege that Respondent registered the Domain Name with a view to sell it.
Respondent argues that its registration and use of the of Domain Name was not in bad faith under Policy ¶ 4(b)(iv). Respondent represents that its registration was based on a desire to register a five-character domain name, as most such domain names have already been registered. Respondent claims that the fact that the word “taget” has an actual meaning in some languages made the Domain Name particularly attractive and that a majority of world’s population would not immediately associate the Domain Name with Complainant. Again, the Panel does not regard this argument as having much merit.
However, of more relevance, Respondent acquired the Domain Name in 2009. The Domain Name was originally registered on 14 April 2004. Complainant’s cease and desist letter was dispatched three years ago. There is no assertion by Complainant that any bad faith use has occurred before now. A three-year gap between acquisition and use does not necessarily support a conclusion that the registration was made with any intent to target the mark owner for abusive purposes. Further, if Respondent’s conduct was causing disruption to Complainant’s business, as alleged, the Panel would have expected it to have acted far more promptly.
Accordingly, the Panel is of the view that on the basis of the record, Complainant has failed to provide sufficient evidence of either bad faith registration or bad faith use.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <taget.com> domain name REMAIN WITH Respondent.
Clive Lincoln Elliott, Esq.
Dated: June 12, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page