Target Brands, Inc. v. M. V. P. / MV Professional Marketing Services
Claim Number: FA1510001644580
Complainant is Target Brands, Inc. ("Complainant"), represented by Steven M. Levy, Pennsylvania, USA. Respondent is M. V. P. / MV Professional Marketing Services ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <targetcvs.com>, <targetcvs.net>, <targetcvspharmacy.com>, <targetcvspharmacy.net>, <cvstarget.com>, <cvstarget.net>, <cvstargetpharmacy.com>, and <cvstargetpharmacy.net>, registered with Godaddy.Com.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2015; the Forum received payment on November 6, 2015.
On October 30, 2015, Godaddy.Com confirmed by email to the Forum that the <targetcvs.com>, <targetcvs.net>, <targetcvspharmacy.com>, <targetcvspharmacy.net>, <cvstarget.com>, <cvstarget.net>, <cvstargetpharmacy.com>, and <cvstargetpharmacy.net> domain names are registered with Godaddy.Com and that Respondent is the current registrant of the names. Godaddy.Com has verified that Respondent is bound by the Godaddy.Com 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 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@targetcvs.com, postmaster@targetcvs.net, postmaster@targetcvspharmacy.com, postmaster@targetcvspharmacy.net, postmaster@cvstarget.com, postmaster@cvstarget.net, postmaster@cvstargetpharmacy.com, postmaster@cvstargetpharmacy.net. Also on November 9, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 November 30, 2015.
On December 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-known retailer with approximately 1,750 stores in the United States and annual revenues of US $72.6 billion. Complainant uses TARGET in connection with this business, and holds several longstanding U.S. registrations for TARGET and related marks. Complainant claims that it is among the most famous retail department store brands, and that its TARGET mark is distinctive and world famous. On June 15, 2015, Complainant announced that it had reached a deal with another well-known retailer, CVS Health, under which CVS will acquire Complainant's in-store and online pharmacy and health clinic operations. Respondent registered the disputed domain names <targetcvs.com>, <targetcvs.net>, <targetcvspharmacy.com>, <targetcvspharmacy.net>, <cvstarget.com>, <cvstarget.net>, <cvstargetpharmacy.com>, and <cvstargetpharmacy.net> on June 16, 2015.
Complainant contends that the disputed domain names are all confusingly similar to its TARGET mark; that Respondent has no rights or legitimate interest in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. In support thereof, Complainant states that Respondent is not commonly known by any of the domain names; that Complainant has not consented to Respondent's use of its mark; and that Respondent is not making any active use of the domain names. Complainant states that the domain names resolve to a domain name registrar's promotional page and previously resolved to a page that stated "The future home of something quite cool." Complainant characterizes Respondent as "an experienced domainer and cybersquatter," and notes that Respondent owns many other "obviously infringing" domain names, including <goodwillsuperstore.com>, <walgreenproducts.com>, <cvsproducts.com>, <wholefoodsmarketsuperstore.com>, <netflixter.com>, <traderjoessuperstore.com>, <disneyforgirls.com>, <chevymotorcompany.net>, <chevyroars.net>, <fordroars.net>, and <kmartsuperstore.net>. Complainant notes further that the disputed domain names were all registered only one day after the public announcement of the Target-CVS deal.
B. Respondent
Respondent contends that the disputed domain names are not identical or confusingly similar to a mark in which Complainant has rights. Respondent claims to have a legitimate interest in respect of the domain names, and asserts that they were registered and are being used in good faith.
Respondent states that it is not "a typical domainer," and that none of its domain names will ever be offered for sale or used in bad faith. Respondent denies any present or future intention to profit from the domain names. Apparently in response to Complainant's allegations regarding other "obviously infringing" domain names, Respondent claims to have "connections with managers" at all of the corresponding companies, and states that all of them are waiting to receive marketing and advertising assistance from Respondent.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of each domain name; and that each domain name was 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 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.
Each of the disputed domain names contains Complainant's registered TARGET mark, along with "CVS" and a top-level domain. Several of them also contain the generic term "pharmacy." These additions do not diminish the similarity between the domain names and Complainant's mark. See, e.g., Kabbage, Inc. v. Oneandone Private Registration, 1&1 Internet Inc. - www.1and1.com / Robert Hanssen, Ridiculous File Sharing, D2015-1507 (WIPO Nov. 20, 2015) (finding <kabbage4amazon.com> and <kabbage4etsy.com> confusingly similar to KABBAGE); Google Inc. v. Chris Gillespie, FA 1434643 (Nat. Arb. Forum May 10, 2012) (finding <googlecvscaremark.com> confusingly similar to GOOGLE); Target Brands, Inc. v. Jeff Graves, FA 804695 (Nat. Arb. Forum Nov. 6, 2006) (finding <targetdrugstore.com> confusingly similar to TARGET); Target Brands, Inc. v. Spiral Matrix, FA 697859 (Nat. Arb. Forum June 14, 2006) (finding <targetvisa.net> and <targetsalvationarmy.com> confusingly similar to TARGET). The Panel finds that the disputed domain names are confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain names all incorporate Complainant's mark without authorization, and they currently redirect to Respondent's domain name reseller site. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct."
The instances of bad faith set forth in paragraph 4(b) are merely illustrative, and bad faith may be found based upon other circumstances in appropriate cases, such as where a domain name incorporating two trademarks is registered immediately after a public announcement regarding a transaction involving the trademark owners. See, e.g., Holcim Ltd, v. Zoo / UJ0205, D2014-0718 (WIPO July 14, 2014) (finding bad faith in registration of <lafargeholcim.com> one business day before LaFarge and Holcim Ltd. announced their merger, apparently based upon inside information); Microsoft Corp. v. jatin patel c/o network info, FA 1398287 (Nat. Arb. Forum Aug. 9, 2011) (finding bad faith in registration of <microsoftskype.co> one day after Microsoft announced its acquistion of Skype); Thomson Canada Ltd., Thomson Finance S.A. & Reuters Ltd. v Joe Hyon-chol, FA 1107033 (Nat. Arb. Forum Jan. 17, 2008) (finding bad faith in registration of <thomsonreuters.com> on same day that Reuters announced its acquisition by Thomson); 3M Co. v. B K Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (finding bad faith in registration of <3mcuno.com> on same day that 3M announced its acquisition of Cuno Inc.); Konica Corp., Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, D2003-0112 (WIPO Mar. 31, 2003) (finding bad faith in registration of <konicaminolta.net> on same day that Konica and Minolta announced their merger).
In this case the disputed domain names all incorporate the trademarks TARGET and CVS, and all were registered one day after Complainant's public announcement regarding its deal with CVS, in a clear instance of opportunistic bad faith. Furthermore, the eight domain names at issue in this proceeding and the eleven other "obviously infringing" domain names cited by Complainant evince a pattern of abusive registrations under paragraph 4(b)(ii) of the Policy. The Panel doubts that any of the owners of the corresponding trademarks have consented to Respondent's registration of domain names incorporating their marks. For these reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.
The disputed domain names all contain both Complainant's trademark and the trademark of a company that is not a party to this proceeding. While it may be preferable for a complainant to obtain the consent of a third-party rights holder before seeking transfer of a domain name, such consent is not necessary, and the alternative remedy of cancellation is properly viewed with disfavor. See Kabbage, Inc., supra (ordering transfer without prejudice to third parties with respect to their marks). In this case the Panel considers transfer to be the appropriate remedy.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetcvs.com>, <targetcvs.net>, <targetcvspharmacy.com>, <targetcvspharmacy.net>, <cvstarget.com>, <cvstarget.net>, <cvstargetpharmacy.com>, and <cvstargetpharmacy.net> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 8, 2015
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