Target Brands, Inc. v. yin jun
Claim Number: FA1506001624128
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is yin jun / yin jun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <httpstarget.com>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 12, 2015; the Forum received payment on June 18, 2015.
On June 14, 2015, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <httpstarget.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2015 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@httpstarget.com. Also on June 18, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in spite of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds there is persuasive evidence to suggest Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.
Complainant Target Owns Its Marks. Complainant Target is the owner of the distinctive and world famous TARGET trademarks (the “Marks”). Many years ago, and long prior to the creation of the <httpsTarget.com> domain, Complainant commenced use of the TARGET marks in connection with the advertising, marketing and operation of retail department stores, and the sale of products and services related thereto including groceries, pharmaceuticals, and personal care products. Since the inception of the Marks, Complainant Target has continually used them in interstate commerce.
The TARGET Marks Are Extensively Used, Promoted and Protected. Created in Minneapolis, Minnesota in 1962 as a division of the former Dayton Hudson Corporation, Complainant is now one of the most famous brands in the field of retail department stores. Complainant currently serves customers through approximately 1,750 stores in the United States, maintains offices in a number of other countries around the world, and is traded on the New York Stock Exchange under the ticker symbol TGT. In its fiscal year 2014, Complainant reported revenues of US$72.6 billion.
Complainant extensively promotes its TARGET Marks through print, web, television, and trade show advertising and expends millions of dollars in this effort. Complainant has also been the subject of extensive media coverage including stories in the New York Times, The Wall Street Journal, CNN and many other outlets. Target is consistently ranked as one of the most philanthropic companies in the U.S. and has been a major benefactor of relief efforts, including monetary and product donations after the September 11th attacks in 2001, the tsunami in South Asia in 2004, and Hurricane Katrina in 2005. The recipient of a number of business awards, Target’s accolades include being named one of America’s Most Popular Stores by Forbes Magazine in 2009, receiving the “Grassroots Innovation Award” in 2010 from the Public Affairs Council for the company’s participation in the National Civic Summit, and being named, by J.D. Power and Associates, as the highest in overall customer service for mass merchandisers 4 years running (2007-2010).
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its <www.Target.com> website. Through this domain, Complainant also provides information to current and prospective customers about the many different products it sells. As a result of Complainant’s long usage and promotion of the TARGET Marks, they have become famous and widely recognized by consumers around the world.
The Marks are aggressively protected through registration and enforcement. Complainant owns many trademark registrations for the TARGET Marks, including trademark registrations as follows:
Mark Goods and Services Reg. No. Reg. Date
TARGET IC 003 005. US 051. G & S: Toothpaste, [ bath oil, ] deodorant preparations for personal use [ , cream rinse ] and aerosol shaving cream. FIRST USE: 19621101. FIRST USE IN COMMERCE: 19651210 0818410 (US) November 8, 1966
TARGET (With Logo) IC 035. US 101. G & S: Retail department store, retail grocery store, retail bakery, prescription compounding and dispensing and restaurant and snack bar services. FIRST USE: 19620430. FIRST USE IN COMMERCE: 19651210 0845615 (US) March 5, 1968
TARGET IC 042. US 101. G & S: Retail department store, retail grocery store, retail bakery, prescription compounding and dispensing, and restaurant and snack bar services. FIRST USE: 19620430. FIRST USE IN COMMERCE: 19651210 0845193 (US) February 27, 1968
TARGET ICs 035 and 042 (see below) 1771229 (CTM) March 21, 2007 (Filed July 24, 2000)
IC 035: Business services in the nature of assistance and advice in the establishment of retail department stores in the field of men's, women's, children's and infants' clothing and accessories, jewelry, clocks, and watches, health and beauty aids, pharmacy and prescriptions, optical supplies, cigarettes and tobacco, records and tapes, books and magazines, men's, women's, children's and infants' shoes, furniture and rugs, trees, plants and flowers, toys and athletic sporting goods, hobby and crafts supplies and equipment, tire, battery, oil, antifreeze and automotive accessory, guns and ammunition, bedding, linens, curtains and draperies, cameras, calculators and telephones, computer hardware, software and accessories, bicycle and bicycle accessories, automotive maintenance and repair supplies and equipment, pet equipment and supplies, giftshop, housewares and tableware, radio, television and sound equipment, video recorders, video tape and video game, tool and hardware, fishing, boating, camping and hunting equipment, garden, lawn and patio equipment and supplies, stationery, office and school supplies, small electrical appliances, electrical and plumbing maintenance and repair supplies and equipment, bakery goods, picture frames and mirrors, and christmas trees, ornaments, decorations, lights and accessories; none of the aforesaid services being market research services, and/or employment agency or personnel management consultancy services.
IC 042: Providing of food and drink; professional consultation (non-business) namely advice in the operating of retail department stores in the field of men's, women's, children's and infants' clothing and accessories, jewellery, clocks, and watches, health and beauty aids, pharmacy and prescriptions, optical supplies, cigarettes and tobacco, records and tapes, books and magazines, men's, women's, children's and infants' shoes, furniture and rugs, trees, plants and flowers, toys and athletic sporting goods, hobby and crafts supplies and equipment, tire, battery, oil, antifreeze and automotive accessory, guns and ammunition, bedding, linens, curtains and draperies, cameras, calculators and telephone, computer hardware, software and accessories, bicycle and bicycle accessories, automotive maintenance and repair supplies and equipment, pet equipment and supplies, giftshop, housewares and tableware, radio, television and sound equipment, video recorders, video tape and video game, tool and hardware, fishing, boating, camping and hunting equipment, garden, lawn and patio equipment and supplies, stationery, office and school supplies, small electrical appliances, electrical and plumbing maintenance and repair supplies and equipment, bakery goods, picture frames and mirrors, and Christmas trees, ornaments, decorations, lights and accessories; none of the aforesaid services being vocational consultancy services.
TARGET ICs.: 25, 28 and 35 (see below) 2733228 (CTM) September 20, 2010 (Filed June 13, 2002)
IC 025: Articles of clothing; articles of underclothing; nightwear; swimwear; footwear; hosiery; headwear.
IC 028: Toys, games and playthings; action figures; dolls and accessories for dolls, including dolls' clothes, dolls' feeding bottles and dolls' houses; marionettes and puppets; teddy bears; mobiles; kites; rocking horses; rattles; toy masks; bath toys; board games; parlour games; building blocks; dice and cups for dice; marbles; conjuring apparatus; toy vehicles; toy scooters; scale model vehicles; toys for domestic pets; twirling batons; electric games and playthings (other than those adapted for use with television); electronic remote controlled toys; hand held computer games; hand held electronic games; amusement apparatus and machines being automatic and/or coin or counter operated; amusement apparatus for use in arcades; amusement apparatus and machines incorporating television screens and/or sound recording facilities; coin-operated games; Christmas trees made of synthetic materials; Christmas tree stands; decorations for Christmas trees; Christmas crackers; novelties for parties; sporting and gymnastic apparatus; balls, bats and racquets; hockey sticks; golf clubs; billiard tables, balls and cues; body building and training apparatus; dumb bells; stationary exercise bicycles; gloves for sporting purposes, including golf gloves and boxing gloves; protective padding, elbow guards and knee guards; sleighs, bobsleighs, skis, skates and parts and fittings for such goods; waterskis and surf boards; skateboards; paragliders; hang gliders; climbers' harnesses; fencing weapons, masks and gauntlets: fishing rods, fishing reeds, fishing tackle and fish hooks; tables for indoor football; swimming pools; swimming flippers; swimming floats; swings and slides; skittles, quoits and ninepins.
IC 035: Retail services; retail services of a department store specialising in goods such as cosmetics, beauty care products, electronic goods, white goods, lighting, jewellery, stationery, bags and luggage, furniture, household utensils, clothes, carpets and rugs, and toys, games and playthings; sale of goods on-line or via the Internet; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail store; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise catalogue, insert media leaflets and publications, off-the-page advertisements, or from a general Internet website; the bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods in a wholesales outlet; the bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunications; receiving orders for goods and forwarding such orders to be fulfilled by specific shops or outlets in the vicinity of the recipient; merchandising, namely the placement of assortments of goods for sales promotion purposes, and the ordering of assortments of goods, in all forms of trading; on-line e-commerce provider services, namely the presentation of goods, order placement and delivery services, and invoice management; arranging and concluding commercial transactions for others via on-line shops; telephone and/or computerised order placement for tele-shopping, for others; sales promotion by means of customer loyalty services; customer loyalty services whether or not with the use of a card; advertising services and the distribution of leaflets and samples; organisation of exhibitions for commercial or advertising purposes; marketing operations, studies and research; public relations; franchising services; none of the aforesaid services being market research services.
Respondent’s registration of the <httpsTarget.com> domain violates the Policy.
The <httpsTarget.com> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Apart from its use of the standard URL prefix “https”, Respondent’s <httpsTarget.com> domain is identical, on its face, to Complainant’s registered TARGET Marks. Numerous Panel decisions have held that the addition of such misleading generic prefixes to a complainant’s trademark, creates a confusingly similar domain name. See, e.g., Target Brands, Inc. v. Domain Hostmaster, CustomerID: 86519751347977,33528701558664,67451560378250 / Whois Privacy Services Pty Ltd. NAF Claim No. FA 1550427 (2014) (wwwtarget.org found confusingly similar to the TARGET mark since “Respondent adds … the prefix ‘www’ without the period that usually separates it from the second-level portion of a domain. Normally such changes are considered so minor the disputed domain names are held to be confusingly similar to a complainant’s marks.”); Time Warner Inc. v. Zhichao Yang, NAF Claim No. FA 1500968 (2013) (domain httptimewarnercable.com ordered transferred where “[t]he addition of extra letters to Complainant’s TIME WARNER CABLE mark does not negate a finding of confusing similarity pursuant to Policy ¶4(a)(i)”); Orbitz Worldwide, LLC v. PPA Media Services / Ryan G Foo, NAF Claim No. FA 1470415 (2012) (httporbitz.com ordered transferred and found to be “confusingly similar to Complainant’s ORBITZ.COM mark under Policy ¶4(a)(i)”).
Of course, the use of a top-level domain is, at best, irrelevant to this component of the UDRP test and does nothing to alleviate confusion. See, Chan Luu Inc. v. hurry cater, NAF Claim FA1211001473620 (2013), citing, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Here, the Respondent initially attracts searchers to its website by using a nearly identical copy of the Complainant’s TARGET Mark thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. This clearly causes confusion and satisfies the first element of the UDRP test. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers discover they are not at one of Complainant’s sites, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the website of the <httpsTarget.com> domain when this is clearly not the case.
(b) Respondent has no rights or legitimate interest in the <httpsTarget.com> domain Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <httpsTarget.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s website under the <httpsTarget.com> domain is a classic pay-per-click site displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites, some of which are not associated with Complainant and, in some cases, are associated with Complainant’s competitors in the field of retail store services. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
With respect to Policy ¶4(c)(ii), upon information and belief, Respondent is not commonly known by the name <httpsTarget.com> or “TARGET” nor does Respondent operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the TARGET name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.”)
Respondent is not making a legitimate noncommercial or fair use of the <httpsTarget.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s TARGET retail stores, who used the domain name <httpsTarget.com>, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing third-party products or services. Such use cannot be considered fair.
Lastly, Respondent’s use has tarnished and diluted the TARGET Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products and services offered under the Marks by Complainant by using the Marks in association with unrelated sites which provide products or services which may not be associated with or related to Complainant’s quality branded products and services. Respondent’s use creates the very real risk that Complainant’s trademarks are being associated with numerous products and services over which Complainant has no quality control.
(c) Respondent Registered The <httpsTarget.com> Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the Marks without consent from Complainant. Respondent was on actual notice of Complainant’s rights in the Marks through Complainant’s extensive and international use of the TARGET Marks which predate Respondent’s acquisition of the <httpsTarget.com> domain.
Next, Respondent is obtaining commercial gain from its use of the <httpsTarget.com> website based upon the confusion it creates with Complainant’s website at the URL http://www.Target.com. When a visitor to the <httpsTarget.com> website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the Disputed Domain. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211 (Finding in a similar case that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant in the blogging, and website creation and design fields. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of forwarding fees from its <httpsTarget.com> domain results from pay-per-click links. This alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by forwarding visitors to potential competitors of Complainant. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the <httpsTarget.com> domain. There is no other rational explanation for Respondent having registered and maintained the <httpsTarget.com> domain and resolving it to a pay-per-click site with links to products and services which are related to, or compete with Complainant. Respondent’s use of the domain name is commercial because the various companies forwarded from the <httpsTarget.com> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <httpsTarget.com> domain, Respondent is entirely and solely responsible for the content of its website. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.
Further evidence of Respondent’s bad faith in the present case is provided by the pattern of conduct in which Respondent has engaged. Policy ¶4(b)(ii). It is apparent that Respondent is a known cybersquatter and is engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. At least one URS case has been successfully brought against Respondent and the Panel was quite clear in its finding. See, Expedia, Inc. v. yin jun, NAF URS Claim No. FA 1611442 (2015) (“This is a clear cut case of bad faith registration and use. Respondent has opportunistically registered and used the registered domain name comprising Complainant's well-known mark in order to generate revenue from redirecting Internet users to websites of Complainant's competitors.”)
Respondent is also the owner of over 100 other domain names, many of which are confusingly similar to other internationally well-known trademarks. A reverse whois search of Respondent’s email address, domain789@126.com, reveals the following examples among them:
Baidddu.com
Citibank.cm
Godaddyd.com
Groupon.wang
Linkedin.wang
Netflix.wang
ebbBay.com
TDbankk.com
Tumblr.wang
xCostco.com
Walmartm.com
www0Amazon.com
sVerizonWireless.com
YwouTube.com
wGroupon.com
This prior decision against Respondent and its ownership of so many other obviously infringing domain names is highly relevant to the consideration of bad faith in the present case since they show the Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others and is well-familiar with brands outside of its home country. See, e.g., Webster Financial Corporation and Webster Bank, National Association v. Ryan G Foo / PPA Media Services, NAF Claim No. FA 1588118 (2015). See also, Boston Medical Center Corporation v. Ryan G Foo / PPA Media Services, NAF Claim No. FA 1586917 (2014) (“The Panel finds that Respondent’s history of bad faith supports Complainant’s contentions and therefore finds Respondent has engaged in a pattern of bad faith use and registration pursuant to Policy ¶4(b)(ii).”)
Regardless of whether this Panel determines that this demonstrates a pattern of conduct which deprives Complainant the ability to reflect its mark in the .org TLD under Policy ¶4(b)(ii), the facts of ¶4(b) are not exhaustive and this Panel may nevertheless consider Respondent’s past actions as evidence of its state of mind in the present dispute. Commonwealth Bank of Australia v. Howard Johns Consultancy P/L, WIPO Case No. DCO2014-0033 (“The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found…”) This pattern also shows Respondent’s familiarity with such brands thus indicating its specific intent to copy Complainant’s TARGET Marks rather than use the word “target” in some generic manner.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <httpsTarget.com> domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses the TARGET mark in conjunction with its business as one of the largest retail companies in the United States. Complainant has rights in the TARGET mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 818,410, registered on November 8, 1966). Registration with the USPTO (or a similar government entity) is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). It is not necessary for Complainant to register its mark in Respondent’s home country, as long as Complainant’s rights can be established somewhere. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant has rights in the TARGET mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <httpstarget.com> domain name is confusingly similar to Complainant’s TARGET mark because it contains the mark in its entirety, and is differentiated by only the addition of the term “https” and the gTLD “.com.” The addition of “.com” is irrelevant to Policy ¶4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Likewise, “https” is a generic internet term which can be applied to virtually every domain name. It means HTTP over SSL, or HTTP secure. Adding such generic terms to a mark to create a domain name leads to a confusingly similar domain name. See 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’s <httpstarget.com> domain name is confusingly similar to Complainant’s TARGET mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). 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.”).
Complainant claims Respondent is not commonly known by the disputed domain name. The WHOIS information lists “yin jun” as Registrant. There is no obvious connection between the domain name and Respondent’s name. Respondent has failed to provide any explanation or evidence to indicate being commonly known by the domain name. Such lack of evidence requires a Panel to find a respondent is not commonly known by a domain name under 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). Respondent is not commonly known by the <httpstarget.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the resolving website (apparently a dynamic parking page) to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to host links to Complainant’s competitors, for which Respondent presumably receives “pay-per-click” fees (or at least free parking). Such web pages demonstrate a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to 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)). Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated a pattern of bad faith registrations through a prior decision decided against it. Complainant cites Expedia, Inc. v. yin jun to show this. NAF URS Claim No. FA 1611442 (2015). Some past panels have found prior decisions decided against a respondent to be sufficient to show a pattern of bad faith registration and use under Policy ¶4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii).”). This Panel remains unconvinced. Policy ¶4(b)(ii) requires Respondent to also prevent Complainant from reflecting it mark in a domain name. Clearly that hasn’t happened because Complainant has the Target.com domain name. This Panel declines to find bad faith on these grounds. Each case should be judged upon its own merits.
Complainant claims Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <httpstarget.com> domain name to provide links to competitors of Complainant, for which Respondent presumably receives “pay-per-click” fees. Past panels have found providing competing links on a dynamic parking page constitutes bad faith in use and registration pursuant to Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). This Panel agrees and find Respondent registered and uses the <httpstarget.com> domain in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claim Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TARGET mark. Respondent had actual notice because of Complainant’s extensive and international use of the TARGET mark (and Respondent’s web site links to Complainant’s web site). When respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). It seems clear Respondent had actual knowledge of Complainant’s rights in the TARGET mark at the time of the domain name’s registration, which means Respondent registered the <httpstarget.com> domain in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <httpstarget.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, July 16, 2015
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