Target Brands, Inc. v. Virtual Services Corporation
Claim Number: FA1211001470228
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Virtual Services Corporation (“Respondent”), Switzerland, represented by Paul Keating of Law.es, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetapplication.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that he 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2012; the National Arbitration Forum received payment on November 14, 2012.
On November 11, 2012, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <targetapplication.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 November 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@targetapplication.com. Also on November 14, 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 December 4, 2012.
A timely Additional Submission was received from Complainant and determined to be complete on December 10, 2012.
Although Respondent requested a three (3) member Panel in its Response, the Respondent did not make the required payment for a three member Panel -despite multiple reminders from the Forum. Accordingly, on December 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist.
On December 17, 2012, the Respondent filed an Additional Submission, communicated to the Panelist on December 18, 2012. However, the Panel decided to not consider this Additional Submission. See further comments under “Findings.”
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
The Complainant states that the TARGET trademark is used in connection with the operation of retail department stores throughout the United States, being one of the most famous brands in that field. The Complainant holds numerous trademark registrations for the TARGET mark, the oldest registered in November 8, 1966.
According to Complainant, the disputed domain name <targetapplication.com> is confusingly similar to Complainant’s TARGET trademark.
The Complainant further states that the Respondent is not commonly known by the disputed domain name, but uses <targetapplication.com> to resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Respondent thereby generates a commercial gain through the operation of its website.
The Complainant argues that the Respondent had constructive and/or actual notice of Complainant’s rights in the TARGET mark before registering the disputed domain name.
B. Respondent
The Respondent points out that Respondent does not operate in the United States, Complainant’s sole place of business. The Respondent states that Respondent was unaware of Complainant at the time it registered the <targetapplication.com> domain name.
According to the Respondent, the <targetapplication.com> domain name is an intended combination of the terms “target” and “application,” which, in the employment industry, refer to an application which is aimed at a specific job or employer. Respondent’s addition of the term “application” to Complainant’s TARGET mark renders an entirely different appearance and meaning.
Further, the Complainant has merely stated the Policy defenses in the negative, which does not constitute having presented a prima facie case, and has provided no evidence that its business was in any manner disrupted or any evidence of any confusion on the part of its customers.
Respondent’s website offers information on how to target job applications, which would be of logical interest to Internet users who use employment websites. Respondent’s site advertises links to employment sites in general, which is a legitimate use.
C. Additional Submissions
The Complainant alleges in its Additional Submission:
1. Respondent is a notorious and experienced cybersquatter who owns hundreds, if not thousands of domains which boldly copy a variety of trademarks from the United States and many other countries around the world. On this basis, Respondent cannot argue that it has no knowledge of large U.S. companies without European operations.
2. Respondent’s argument that the word “Target” has a generic/descriptive dictionary meaning and is used in such capacity in the <targetapplication.com> domain stretches linguistic logic beyond the breaking point.
3. Respondent’s argument that it is making a descriptive, fair use of the phrase “Target Application,” because such phrase is commonly used in relation to employment searches, stretches its credibility to the breaking point since the phrase is not commonly used as such.
4. The pay-per-click links displayed on Respondent’s landing page reference Complainant’s TARGET mark or Complainant’s competitors and are thus based on Complainant’s trademark value, which should be viewed as cybersquatting.
5. Respondent’s <targetapplication.com> domain name disrupts Complainant’s business.
Trademarks and Disputed Domain Name
The Complainant is the owner of the U.S. trademark registrations
U.S. No. 818,410 TARGET Word (registered November 8, 1966)
U.S. No 845,615 TARGET Logo (registered March 5, 1968)
U.S. No 845,193 TARGET Word (registered February 27, 1968)
U.S. No 1,146,216 TARGET Word (registered January 20, 1981)
U.S. No 1,282,569 TARGET Logo (registered June 19, 1984)
U.S. No 1,386,318 TARGET Logo (registered March 11, 1986)
The Complainant is also the owner of the following trademark registrations in Europe:
Swiss National trademark No. 464,176 TARGET Word (registered January 28, 1999), in respect of retail shops and restaurant services in classes 35 and 42
Community Trademark No. 1,771,229 TARGET Word (filed July 24, 2000; registered March 21, 2007), in respect of services in classes 35 and 42
Community Trademark No. 1,771,237 TARGET Logo (filed July 24, 2000; registered June 28, 2007), in respect of services in classes 35 and 42
Community Trademark No. 2,733,228 TARGET Word (filed June 13, 2002; registered September 20, 2010), in respect of goods and services in classes 25, 28 and 35
The Respondent registered the <targetapplication.com> domain name on November 26, 2005.
Respondent´s Additional Submission of December 17, 2012
According to the Forum’s Supplemental Rule 7, a party may submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response or the original submission was received by the Forum.
In this case, the Respondent’s Additional Submission was received after the deadline for submissions.
Accordingly, the Panel will not consider this Additional Submission.
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.
The Complainant presents its trademark registrations with the USPTO to support its claim of rights in the TARGET mark, such as TARGET word mark, Reg. No. 818,410 registered November 8, 1966. The Panel notes that registration of a mark with the USPTO has previously been held to confer such rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Accordingly, the Panel finds that Complainant’s trademark registrations with the USPTO are sufficient to establish rights in the TARGET mark under Policy ¶ 4(a)(i), despite the fact that Respondent operates outside of the United States. See 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).
Further, the Complainant has referred to the fact that it also holds a Swiss National trademark registration for TARGET, Switzerland being the home country of the Respondent.
Therefore, the Panel determines that Complainant has established rights in the TARGET mark under Policy ¶ 4(a)(i).
The Complainant argues that the <targetapplication.com> domain name is confusingly similar to its TARGET mark for the purposes of Policy ¶ 4(a)(i).
The relevant part of the disputed domain name is “targetapplication,” as it has been well established in previous UDRP cases that the added top-level domain – being a required element of every domain name – may be disregarded when assessing whether or not a mark is identical or confusingly similar. 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).
The Panel notes that the remaining portion of the disputed domain name consists of a combination of Complainant’s TARGET mark and the generic term “application.”
The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. In this case, the disputed domain name starts with the incorporated trademark, therewith still being the dominant or principal component of <targetapplication.com>.
While Respondent contends that the disputed domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel concludes that the <targetapplication.com> domain name is confusingly similar to Complainant’s TARGET mark for the purposes of Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <targetapplication.com> domain name within the meaning of Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information on file identifies the domain name registrant as “Virtual Services Corporation.” The Panel obviously finds no similarity between “Virtual Services Corporation” and <targetapplication.com>, which may indicate that Respondent lacks rights or legitimate interests in the disputed 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).
The Complainant further alleges that Respondent uses the <targetapplication.com> domain name to resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant urges that Respondent’s use of the disputed domain name can be considered neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent argues that it is in fact making a legitimate use of the disputed domain name, and thus should be found to have rights and legitimate interests in the domain pursuant to Policy ¶ 4(a)(ii). Respondent asserts that its site advertises links to employment sites in general, which is a legitimate use, and that the presence of pay-per-click links on its site does not negate rights or legitimate interests.
The Panel notes that Respondent has in fact demonstrated at least legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites are not in and of themselves unlawful or illegitimate”).
Respondent states that the terms of the <targetapplication.com> are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Here, the Panel notes that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning. (See Compart AG v. Compart.com v. Vertical Axis, Inc., WIPO Case No. D2009-0462). In this case, the Panel cannot neglect the fact that the combined word “targetapplication,” if used as for <targetapplication.com> may well be considered as related to general job seeking services and thereby also may create a legitimate interest for the Respondent. See Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel concludes that Respondent may well have legitimate interests in the disputed domain name.
To successfully prove the requirement under Policy ¶ 4(b)(iii), the Complainant must prove that both registration and use of the disputed domain name are in bad faith.
As to registration in bad faith, the Panel notes that the Complainant is a U.S. based company, and the Respondent is based in Switzerland. At the time of the registration of <targetapplication.com>, the Complainant had a number of U.S. national trademarks, as well as one national Swiss registration and three pending Community Trademark Applications for TARGET (word and logo). Although this may be used as an argument to support that the disputed domain name was registered in bad faith, the Panel notes the following:
The Respondent contends that <targetapplication.com> is comprised entirely of common terms that have many meanings apart from use in Complainant’s TARGET mark. Where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may be considered use in good faith. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; see also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, indicating that the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term).
The Complainant’s trademark does not cover employment agency or similar consultancy services. In fact, all three cited Community Trademark registrations for TARGET especially and clearly are registered with official limitations, noting that “none of the aforesaid services being market research services, and/or employment agency or personnel management consultancy services” (CTM No. 1,771,229); “none of the aforesaid services being employment agency or personnel management consultancy services” (CTM No. 1,771,237); and “none of the aforesaid services being market research services” (CTM No. 2,733,228).
The Swiss registration does not cover that kind of services either.
Accordingly, the Panel cannot draw any other conclusion than that TARGET as such is not distinctive enough, or at least not protected to cover employment searches or similar services, meaning that at the time of the registration of the disputed domain name, the phrase/word “TARGETAPPLICATION” may well - for a European holder and user - be regarded as a general phrase for employment services rather than a clear reference to the Complainant’s trademark.
Thus the Panel concludes that the Complainant at least failed to prove that the disputed domain name was registered in bad faith.
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 <targetapplication.com> domain name REMAIN WITH Respondent.
Petter Rindforth, Panelist
Dated: December 31, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page