Target Brands, Inc. v. Nijat Hassanov
Claim Number: FA1206001447930
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Nijat Hassanov (“Respondent”), Azerbaijan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetweddingregistry.com>, registered with Moniker.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 12, 2012.
On June 11, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <targetweddingregistry.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 June 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@targetweddingregistry.com. Also on June 13, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant has rights in the TARGET mark, which it uses in connection with retail department store goods and services and is the owner of numerous trademark registrations for the TARGET mark (e.g., Reg. No. 818,410 registered November 8, 1966) with the United States Patent and Trademark Office (“USPTO”).
Although the <targetweddingregistry.com> domain name was initially registered on December 5, 2005, the historical WHOIS records indicate that Respondent acquired the disputed domain name more recently from the prior owner, Marketing Total S.A.
The <targetweddingregistry.com> domain name is confusingly similar to the TARGET mark.
Respondent is not making a bona fide use of the at-issue domain name.
Respondent is not commonly known by the <targetweddingregistry.com> domain name.
The <targetweddingregistry.com> domain name resolves to a website that displays pay-per-click links to competing and noncompeting websites.
Respondent has developed a pattern of bad faith domain name registrations;
The <targetweddingregistry.com> domain name attracts Internet users, for commercial gain, by creating a likelihood of confusion as to the source of the disputed domain name.
Respondent had constructive and/or actual knowledge of Complainant’s rights in the TARGET mark prior to the registration and use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for the TARGET mark.
The at-issue domain name was registered and then acquired by Respondent after Complainant acquired trademark rights in TARGET.
Respondent is not authorized to use Complainant’s trademark.
Respondent has developed a pattern of bad faith domain name registrations.
The at‑issue domain name resolves to a website that displays pay-per-click links to competing and noncompeting websites.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registrations of the TARGET mark with the USPTO is sufficient to conclusively demonstrate Complainant’s rights in mark for the purposes of Polcy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The addition of the generic terms “wedding” and “registry” fail to make the <targetweddingregistry.com> domain name distinctive from Complainant’s TARGET mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Additionally, the Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not bar a finding of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <targetweddingregistry.com> domain name is confusingly similar to Complainant’s TARGET mark under Policy ¶ 4(a)(i).
Respondent lacks rights and legitimate interests in respect of the <targetweddingregistry.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent does not operate a bona fide business or other organization under the <targetweddingregistry.com> domain name and does not have trademark or service mark rights reflecting the disputed domain name. WHOIS information for the <targetweddingregistry.com> domain name lists “Nijat Hassanov” as the domain name registrant. Additionally, there is no evidence of record which suggests that Respondent is commonly known by the at‑issue domain name. Therefore, the Panel finds that pursuant to Policy ¶ 4(c)(ii) Respondent is not commonly known by the <targetweddingregistry.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s use of the <targetweddingregistry.com> domain name is further evidence of Respondent’s lack of rights and legitimate interests therein. The domain name references a website that displays pay-per-click link, some of which compete with Complainant’s business offerings. To wit, Complainant’s moving papers show the <targetweddingregistry.com> domain name’s website contains links listed under headings such as “Macy’s® Bridal Registry” and “Williams-Sonoma Registry.” Displaying competing and noncompeting links on a disputed domain name’s website does not fall within the protected scope of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Thus Respondent’s use of the <targetweddingregistry.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent, Nijat Hassanov, has been the respondent in multiple UDRP proceedings that resulted in the disputed domain names being transferred to the respective complainants. See Metro. Life Ins. Co. v. Nijat Hassanov, FA 1437481 (Nat. Arb. Forum May 17, 2012); see also Ecolab USA Inc. v. Nijat Hassanov, FA 1378085 (Nat. Arb. Forum Apr. 14, 2011); see also Staples, Inc. v. Nijat Hassanov, FA 1378255 (Nat. Arb. Forum May 4, 2011). Multiple adverse findings in UDRP proceedings constitute evidence of Respondent’s serial cybersquatting and are evidence of Respondent’s bad faith registration and use of the <targetweddingregistry.com> domain name 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).
Regarding the instant case, the confusing similarity of the at‑issue domain name will cause Internet users to be confused as to whether or not Complainant is affiliated with the <targetweddingregistry.com> domain name. The at‑issue domain name references a website that displays links to competing and noncompeting websites. It is reasonable to assume that these links are designed to generate revenue for Respondent. These circumstances urge that Respondent’s registration and use of the <targetweddingregistry.com> are in bad faith pursuant to Policy ¶ 4(b)(iv) since they show Respondent is attempting to attract Internet users to the <targetweddingregistry.com> domain name to take commercial advantage of their mistakes. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Finally, Complainant’s extensive use of the TARGET trademark, Respondent’s use of the domain name in a manner which clearly relates to the TARGET mark, as well as Respondent’s infamy as a cybersquatter unabashedly intent on trading on the other’s trademarks, forces the unavoidable conclusion that Respondent must have had actual knowledge of Complainant's rights in the TARGET mark at the time it acquired <targetweddingregistry.com>. Respondent’s having knowledge of Complainant and its mark at the time it acquired the domain name additionally demonstrates bad faith registration and use under the Policy. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetweddingregistry.com> domain name be TRANSFERRED from Respondent to Complainant..
Paul M. DeCicco, Panelist
Dated: July 10, 2012
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