Target Brands, Inc. v. domain Administrator
Claim Number: FA1211001469602
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is domain Administrator (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targettoys.com>, registered with Moniker Online Services LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2012; the National Arbitration Forum received payment on November 13, 2012.
On November 2, 2012, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <targettoys.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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@targettoys.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
i. Respondent is not commonly known by the <targettoys.com> domain name or the TARGET mark, does not operate a business or other organization under any such mark, and does not own any trademark or service mark rights in either the disputed domain name or TARGET.
ii. Respondent is using the disputed domain name to divert Internet users and Complainant’s customers to Respondent’s pay-per-click website, and then to other websites, some of which compete with Complainant. See Complainant’s Exhibit F. Such use of a domain name has been found to not amount to 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).
i. Respondent is intentionally using the TARGET mark to obtain commercial gain from its use of the disputed domain name as a pay-per-click website that offers third-party hyperlinks to many websites, including those of Complainant’s competitors. Complainant believes that each time an Internet user or searcher clicks on one of the links Respondent receives compensation from the various website owners whose links appear on the resolving website.
ii. Respondent had constructive notice of Complainant’s rights in the TARGET mark through the fame and extensive registration of the mark with various agencies. The content of the <targettoys.com> domain name reveals that Respondent had actual knowledge of Complainant’s rights in the TARGET mark, and that Respondent has purposefully traded on the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Target Brands, Inc. a corporation that list its address as Minneapolis, MN, USA. The Complainant owns numerous trademarks, service marks and logos dating back to its first use of the TARGET mark in 1962. Complainant operates nearly 2,000 stores in the USA, has offices both domestically and abroad, and generates significant sales revenue on its official website located at <target.com>. Complainant, a New York Stock Exchange traded company, reported revenues of US$63.4 billion in fiscal year 2009.
Respondent’s provided information is an unidentified PO Box in New York, NY, USA. The domain name was registered with a registrar located in Pompano Beach, FL, USA. The domain name was registered on May 12, 2007. The Complainant sent two demand letters to the Respondent’s registrar via email regarding the instant domain name dispute but received no reply. The disputed domain name resolves to a webpage featuring hyperlinks leading to some of 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.”).
Complainant asserts that it is the owner of the distinctive and world famous TARGET mark and the corresponding logos that it has used since its creation in 1962. Complainant submits that it owns several trademark registrations in several international classes for the TARGET mark with the USPTO (e.g., Reg. No. 818,410 registered Nov. 8, 1966). The Panel finds the registrations to be sufficient for Complainant to establish rights in the TARGET mark under Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Further, Complainant argues that Respondent’s <targettoys.com> domain name is confusingly similar to the TARGET mark. Complainant notes that Respondent has merely added the generic term “toys” to the TARGET mark, which many prior UDRP panels have found to be insufficient to distinguish a domain name from a registered trademark. The Panel further notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s <targettoys.com> domain name is confusingly similar to Complainant’s TARGET mark under Policy ¶ 4(a)(i). 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); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant argues that Respondent is not commonly known by the <targettoys.com> domain name or the TARGET mark, does not operate a business or other organization under any such mark, and does not own any trademark or service mark rights in either the disputed domain name or TARGET. The Panel notes that the only evidence on record in this regard is the WHOIS information, which identifies “domain Administrator” as the registrant of the disputed domain name. The Panel also notes that Respondent has not come forward with any evidence or arguments to explain how “domain Administrator” is related or associated with the <targettoys.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).
Complainant also argues that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <targettoys.com> domain name under Policy ¶ 4(c)(iii), as Respondent is using the disputed domain name to divert Internet users and Complainant’s customers to Respondent’s pay-per-click website, and then to other websites, some of which compete with Complainant. The Panel notes that the evidence shows Respondent’s “sponsored listings” for Complainant’s website as well as for its competitors <ToysRUs.com> and <FatBrainToys.com>, among others. Such use of a domain name has been found to not amount to 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <targettoys.com> domain name under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights of legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant first argues that Respondent is intentionally using the TARGET mark to obtain commercial gain from its use of the disputed domain name as a pay-per-click website that offers third-party hyperlinks to many websites, including those of Complainant’s competitors. Complainant’s Exhibit F contains a screenshot of the resolving website which shows third-party links to Complainant’s official website as well as the websites of its competitors. The Panel finds that such use of the <targettoys.com> domain name is evidence of bad faith use under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant secondly asserts that Respondent had constructive notice of Complainant’s rights in the TARGET mark through the fame and extensive registration of the mark with various agencies. Complainant also argues that the content of the <targettoys.com> domain name reveals that Respondent had actual knowledge of Complainant’s rights in the TARGET mark, and that Respondent has purposefully traded on the mark. The Respondent has not contested these assertions and as such the Panel finds that the Respondent registered the disputed domain name 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).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <targettoys.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 26, 2012
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