Target Brands, Inc. v chen guofu
Claim Number: FA1211001470237
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is chen guofu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetcatalogue.com>, registered with Randomain.ca Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC 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 8, 2012, Randomain.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <targetcatalogue.com> domain name is registered with Randomain.ca Inc. and that Respondent is the current registrant of the name. Randomain.ca Inc. has verified that Respondent is bound by the Randomain.ca Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@targetcatalogue.com. Also on November 15, 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 December 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1.Complainant owns the TARGET trademarks and uses them in its business as a retail department store. Complainant advertises and markets its products and services using the TARGET marks. Complainant’s business was created in 1962 and is currently one of the most well-recognized brands in the retail department store industry. Complainant has stores throughout the United States and offices in India. Complainant extensively uses its TARGET mark in advertising and spends substantial resources to promote its brand. Complainant owns a website at the <target.com> domain name, at which it generates sales revenue by advertising and marketing. Complainant’s TARGET marks are well-recognized as a result of Complainant’s long and continuous use of the mark. Complainant has 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). See Exhibit E-1.
2. The <targetcatalogue.com> domain name is confusingly similar to Complainant’s mark.
3.Respondent has no rights or legitimate interest in the domain name.
4. Respondent registered the <targetcatalogue.com> domain name and linked the name to a website that offers pay-per-click hyperlinks that divert Complainant’s customers to Respondent’s website. The hyperlinks displayed are associated with other entities, some of which are competitors of Complainant. Respondent’s use of the disputed domain name to display pay-per-click links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
5.Respondent is not commonly known by the <targetcatalogue.com> domain name.
6.Respondent uses Complainant’s TARGET mark without Complainant’s permission, and had actual and constructive knowledge of Complainant’s mark prior to registering the disputed domain name.
7.Respondent registered and uses the <targetcatalogue.com> domain name in bad faith because Respondent makes a commercial gain by causing consumer confusion.
8.Respondent has demonstrated a pattern of bad faith registration of domain names incorporating other entities’ marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a famous United States company engaged in the retail industry, advertising, marketing and operation of retail department stores, and other products and services related thereto.
2. Complainant owns numerous trademarks for TARGET including the trademark registered with the United States Patent and Trademark Office (“USPTO”) for its TARGET mark (e.g., Reg. No. 818,410 registered November 8, 1966).
2.Respondent registered the domain name on May 27, 2012. It is linked to a website that carries links to websites that are not associated with Complainant and, in some cases, websites associated with Complainant’s competitors.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it owns rights in the TARGET mark via its USPTO trademark registrations (e.g., Reg. No. 818,410 registered November 8, 1966). The panel in Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), held that the complainant had established rights in its mark through USPTO registration. Likewise, the Panel finds that Complainant’s rights in its TARGET mark are secured through its USPTO registrations, even when the mark is not registered in the country where Respondent is located. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s TARGET marks. Complainant argues that the <targetcatalogue.com> domain name is confusingly similar to Complainant’s TARGET mark because the domain name uses Complainant’s entire mark, followed by the generic term “catalogue.” The Panel also notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com.” The Panel determines that by using the TARGET mark in its entirety and adding only the generic term “catalogue” and the gTLD “.com,” the <targetcatalogue.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). 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)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TARGET mark and to use it in its domain name, adding only the word “catalogue” , thus implying that the domain name is an official domain name of Complainant leading to an official website of Complainant providing an online catalogue of Complainant;
(b) Respondent has then used the domain names to resolve to a website that carries links to websites that are not associated with Complainant and, in some cases, websites associated with Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent is not commonly known by the <targetcatalogue.com> domain name and Respondent does not operate a business under the mark. The Panel observes that the WHOIS information associated with the disputed domain name identifies “chen guofu” as the registrant. The Panel finds that the WHOIS information does not indicate that Respondent is commonly known by the <targetcatalogue.com> domain name and thus determines that Respondent lacks rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 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).
(e)Complainant makes the assertion that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <targetcatalogue.com> domain name as Respondent maintains a website at the disputed domain name that displays hyperlinks to various third-party websites, some of which are competitors of Complainant’s business. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel stated that operating a pay-per-click website at a confusingly similar domain name did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel determines that hosting a webpage offering visitors hyperlinks to businesses, some of which compete directly with Complainant, is not 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).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant makes the contention that Respondent has previously engaged in the bad faith registration and use of other domain names using marks belonging to other entities. See Swissôtel Mgmt. Gmb v. BellNames Privacy Protection Servs. / guofu, D2012-1521 (WIPO Sept. 30, 2012). The Panel observes that Complainant provides evidence of only one prior adverse UDRP decision against Respondent, which the Panel notes has generally been found insufficient to support a finding of bad faith under Policy ¶ 4(b)(ii) by itself. Nevertheless, as the Panel determines that Respondent has engaged in a pattern of bad faith registration and use of domain names and in view of the evidence of the registration and use of the disputed domain name, the Panel finds bad faith registration and use under Policy ¶ 4(b)(ii) here.
Secondly, Complainant alleges that Respondent uses the TARGET mark in the <targetcatalogue.com> domain name to make a profit by linking its website with a directory of hyperlinks. Complainant also argues that Respondent causes confusion between Complainant’s TARGET mark and the disputed domain name, demonstrating bad faith. The Panel finds that Respondent’s bad faith registration and use of the <targetcatalogue.com> domain name under Policy ¶ 4(b)(iv) is demonstrated by Respondent’s use of the confusingly similar domain name to attract consumers to its website in order to generate revenue via the displayed hyperlinks. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Thirdly, Complainant contends that Respondent had actual and constructive notice of Complainant’s TARGET mark prior to registering the <targetcatalogue.com> domain name. Complainant alleges that Complainant’s widespread use of the TARGET mark, as well as its numerous trademark registrations, serves as notice to Respondent of Complainant’s rights in the mark. The Panel determines that Complainant’s extensive use of the TARGET mark and the hyperlinks to various competing parties at Respondent’s resolving website serve as proof that Respondent registered the <targetcatalogue.com> domain name with actual knowledge of Complainant's mark in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”.).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TARGET mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetcatalogue.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 19, 2012
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