Target Brands, Inc. v. HANNA EL HINN / TARGEET.COM
Claim Number: FA1601001655563
Complainant is Target Brands, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is HANNA EL HINN / TARGEET.COM (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targeet.com>, registered with eNom, Inc.
The undersigned certifies that he or she 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 7, 2016; the Forum received payment on January 7, 2016.
On January 07, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <targeet.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2016 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@targeet.com. Also on January 8, 2016, 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 February 23, 2016, 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant's Mark: TARGET
[i.] TARGET for 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 (U.S. Reg. No. 845,193);
[ii.] TARGET Design Logo for 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 (U.S. Reg. No. 845,615); and
[iii.] TARGET and Bullseye Design for retail department store sales services, namely, men's, women's, children's and infants' clothing and accessories sales services; jewelry, clocks and watches sales services; health and beauty aids sales services; pharmacy and prescription sales services; optical supplies sales services; cigarettes and tobacco sales services; records and tapes sales services; books and magazines sales services; men's, women's, children's and infants' shoes sales services; furniture and rugs sales services; food and candy sales services; trees, plants and flowers sales services; toys and athletic sporting goods sales services; hobby and crafts supplies and equipment sales services; tire, battery, oil, antifreeze and automotive accessory sales services; guns and ammunition sales services; bedding, linens, curtains and draperies sales services; cameras, calculators and telephone sales services; computer hardware, software and accessories sales services; bicycle and bicycle accessories sales services; automotive maintenance and repair supplies and equipment sales services; pet equipment and supplies sales services; gift shop, housewares and tableware sales services; radio, television and sound equipment sales services; video recorders, video tape and video game sales services; tool and hardware sales services; fishing, boating, camping and hunting equipment sales services; garden, lawn and patio equipment and supplies sales services; stationery, office and school supplies sales services; small electrical appliances sales services; electrical and plumbing maintenance and repair supplies and equipment sales services; bakery goods sales services; pictures, picture frames and mirror sales services; and Christmas trees, ornaments, decorations, lights and accessories sales services. FIRST USE: 19720000. FIRST USE IN COMMERCE: 19720000 (U.S. Reg. No. 1,386,318).
Complainant is the owner of numerous federal trademark registrations in the United States that consist of or include the word TARGET. In addition, Complainant holds valid registrations or has pending trademark applications for the TARGET marks covering over 60 countries.
FACTUAL AND LEGAL GROUNDS
The Complaint is based on the following factual and legal grounds:
The Target Stores division of Target Corporation ("Target"), a licensee of Complainant Target Brands, Inc., is an upscale discount retailer that provides high-quality, stylish merchandise at affordable prices. The company was founded in 1902 as the Dayton Dry Goods Company and its first Target store was opened in 1962 in Roseville, Minnesota. Target developed and eventually became the largest division of Dayton Hudson Corporation and was renamed as Target Corporation in August 2000, with its corporate headquarters located in Minneapolis, Minnesota. Target Brands, Inc. was founded in 1946 and operates as a subsidiary of Target Corporation.
Target is the second largest retailer in the United States with over 1,700 Target and Super Target stores located in 49 states. Target and Super Target offers household products, apparel and accessories, electronic, entertainment products, groceries and much more. Target sells many of their products under private label brands. In addition to their retail segment, the company also offers credit and debit cards to its loyal guests.
In addition, Target Corporation has 37 distribution centers and 355,000 team members worldwide. Complainant operates stores in the USA, has global locations in India and Canada. Complainant generates significant sales revenue from its official website located at TARGET.COM and averages approximately 36M unique monthly visitors according to Compete.com.
Target Corporation (NYSE: TGT), reported full sales increase to $72.6 billion in fiscal year 2014. Given Complainant's success as an industry giant, Complainant has also received the following awards and recognitions:
· Fortune magazine ranked Target No. 22 on its list of "World's Most Admired Companies."
· Forbes magazine and the Reputation Institute ranked Target No. 22 on the list of "America's Most Reputable Companies."
· Fast Company named Target No. 10 on its 2013 list of the 50 Most Innovative Companies.
· Corporate Responsibility Magazine ranked Target No. 64 on its list of "100 Best Corporate Citizens."
Target has transformed its signature bulls-eye logo into a lifestyle symbol. The bulls-eye is recognized by 96% of American consumers and has a national reputation for quality and value. The popularity of the symbol was accomplished through a robust commitment to advertising that built an iconic brand. As a result of such efforts, the TARGET Marks enjoy a high degree of recognition and public awareness in the United States and globally. An online- survey by Brandchannel.com showed that the TARGET brand had impacted many lives in the United States and Canada, ranking it as one of the top ten brands from 2001-2006.
The Complainant enjoys widespread consumer recognition and has spent millions of dollars in advertisement and promotion of the Marks on the Internet through its website located at TARGET.COM since its launch in 1997. In addition, the Complainant's continuous use and extensive advertising efforts in national television campaigns have identified the Complainant as the exclusive licensee of the TARGET Marks and have identified the Marks to be famous as defined in 15 U.S.C. § 1125. Its Marks have been used continuously and have not been abandoned, cancelled, or revoked.
Based on its federal trademark registrations and extensive use, Target Brands, Inc., owns the exclusive right to use the Marks in connection with retail store services and on-line retail services in the field of merchandise, apparel, and accessories.
[a.] The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.
i. By virtue of its federal trademark and/or service mark registrations, Complainant is the owner of the Complainant's Mark(s). See, e.g., United Way of America v. Alex Zingaus, FA0707001036202 (Forum Aug. 20, 2007) ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)"). As in other cases, it is also important to note that it is irrelevant for the purposes of Policy 4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
ii. The Disputed Domain Name(s) is/are confusingly similar to Complainant's Mark(s) because it differs by only a single character from Complainant's Mark(s), or because it differs by only the juxtaposition of two characters when compared to Complainant's Mark(s). For clarification, the Disputed Domain Name(s) contains either:
[a.] the addition of one extra character, or...
[b.] the removal of one character, or...
[c.] one character which is incorrect, or...
[d.] two juxtaposed characters
as compared to Complainant's Mark(s).
iii. The Disputed Domain Name(s) is/are, simply put, a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, FA0603000661437 (Forum May 2, 2006) ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, FA0010000095762 (Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks).
[b.] Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:
i. Respondent has not been commonly known by the Disputed Domain Name(s). Upon information and belief, at the time Respondent registered the Domain Name(s), it had no trademark or intellectual property rights in the Domain Name(s). See Policy, ¶4(c)(ii). See WHOIS record for the Disputed Domain Name(s). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA0707001036202 (Forum August 30, 2007); see also RMO, Inc. v. Burbridge, FA 96949 (Forum May 16, 2001) (interpreting Policy, ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); See also Gallup Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).
ii. Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
iii. Complainant has not given Respondent permission to use Complainant's Mark in a domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark).
iv. A "Cease and Desist" letter was sent to the Respondent. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
v. Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. RaveClub Berlin, FA106115 (Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
vi. Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent's use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).
vii. The earliest date on which Respondent registered the Disputed Domain Name(s) was May 27, 2002 (TARGEET.COM), which is significantly after Complainant's first use in commerce, December 10, 1965 (Target), as specified in their relevant registration with the USPTO.
viii. The earliest date on which Respondent registered the Disputed Domain Name(s) was May 27, 2002 (TARGEET.COM), which is significantly after Complainant's registration of their relevant Marks with the USPTO on November 8, 1966 (Target).
ix. The earliest date on which Respondent registered the Disputed Domain Name(s) was May 27, 2002 (TARGEET.COM), which is significantly after Complainant's registration of TARGET.COM on January 2, 1997.
[c.] The Disputed Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:
i. The Respondent has listed (some or all of) the Disputed Domain name(s) for sale. As shown in WIPO Decision D2001-1066, Trip.com, Inc. v. Daniel Deamone, "A fourth factor is that Respondent has offered the Domain Name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent's offer of the Disputed Domain Name(s) for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy." The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000). See also WIPO Case No. D2003-0689, Mr. Donning Eric v. Mr. Nyunhwa Jung,..."The posting of the announcement: "This domain is for SALE!" constitutes satisfactory evidence, when combined with the Respondent's lack of legitimate rights to or interests in the domain name, that the Respondent's primary purpose in registering the domain name was to sell it in contravention of the Policy (EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036).
ii. Respondent's bad faith is further shown by the Respondent using (some or all of) the Disputed Domain Name(s) website in connection with generating revenue as a "click through" website by using the Complainant's registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercially gain. In WIPO Decision D2008-1470, AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.l., v. Caribbean Online International Ltd. / BelgiumDomains "the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies' websites related to cruises and travels, in the form of a "clickthrough" website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a "click-through" website has to be considered as an evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007- 1605)".
iii. To further stress the above, Respondent's setting up of a "click through" website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent's bad faith. The Respondent has registered and used the Disputed Domain Name(s) in bad faith pursuant to Policy 4(b)(iv) by using the Disputed Domain Name(s) to attract and mislead consumers for its own profit. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (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)."); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant's mark to offer links to third-party websites that offered services similar to those offered by the complainant). See also Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy 4(b)(iv).
iv. In addition to the above, the Respondent's advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant's business. The Panel should find that this effort to divert consumers and disrupt Complainant's business is evidence of bad faith registration and use under Policy 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int'l Prop. Assoc., FA 914854 (Forum Apr. 10, 2007) (holding that where the respondent's website featured hyperlinks to competing websites and included a link to the complainant's website, the respondent's use of the <redeemaamiles.com> domain name constituted disruption under Policy 4(b)(iii)).
v. Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Name(s) to display Complainant's Mark(s) spelled correctly (even though the domain name(s) is a misspelled version of the same mark(s)). This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s).
vi. Respondent has caused the websites reachable by (some or all of) the Disputed Domain Name(s) to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.
vii. Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003- 0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").
viii. Respondent is a recalcitrant, serial cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. Previous panels have agreed that multiple prior UDRP decisions are sufficient evidence indicating a respondent's bad faith use and registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (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).").
Respondent holds registrations on other domain names that appear to be straight forward examples of typosquatting. Although those names are not directly involved in this complaint, they serve as further evidence of bad faith intent on the part of Respondent. See Policy, 4(b)(ii) and Time Warner Inc. v. Zone MP3, FA0706001008035 (Forum July 25, 2007) (typosquatting combined with registration of as few as four domain names that are identical or confusingly similar to "protected marks" is sufficient to establish a pattern leading to bad faith). See also Citigroup Inc. v. Digi Real Estate Foundation, FA0704000964679 (Forum May 30, 2007).
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(f), 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 (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 connection with its retail department and grocery stores. Complainant registered the TARGET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 845, 193, registered February 27, 1968). Under Policy ¶ 4(a)(i), registrations with a governmental authority adequately demonstrate a complainant’s rights in a mark, even where Respondent operates in a different country. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also 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 claims Respondent’s <targeet.com> domain name is confusingly similar to the TARGET mark because Respondent uses the mark completely and the only changes are the addition of another letter “e” and the addition of the “.com” gTLD at the end of the mark. The disputed domain name is an example of typosquatting because the intent is to take advantage of Internet users’ typographical errors. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark). While the UDRP does not prohibit typosquatting explicitly, the UDRP does prohibit using a domain name which is confusingly similar to a mark (and Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i)). See Victoria’s Secret v. Zuccarini, FA 95762 (Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). A TLD must be ignored under a Policy ¶ 4(a)(i) analysis because every domain name must have a TLD (whether a gTLD or a ccTLD); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Respondent’s <targeet.com> domain name is confusingly similar to the TARGET mark under 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 has no rights or legitimate interests in the <targeet.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “Hanna El Hinn” as registrant of record. There is no obvious relationship to the disputed domain name. Respondent has failed to submit a response in this proceeding. Complainant did not give Respondent permission to use Complainant’s mark in a domain name. Respondent registered the disputed domain name significantly after Complainant’s registration with the USPTO. There is no evidentiary basis to find Respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant claims Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <targeet.com> domain name. Respondent’s domain name redirects Internet users to a dynamic parking page website featuring generic links to third-party websites, including websites of businesses that are direct competitors of Complainant’s business. Such links include: “Store at Walmart,” “Amazon.com® Official Site,” and “Wayfair Furniture Sale.” Presumably, Respondent receives pay-per-click fees from these linked websites (or at least free web site hosting). Such use by a respondent is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Respondent’s <targeet.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate or fair use under Policy ¶ 4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent offered the <targeet.com> domain name for sale to the general public, as evidenced by the WHOIS record. Such a generic offer to the public to sell by Respondent constitutes bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Such an offer to sell indicates bad faith registration and use because Respondent primarily intended to resell the domain name when registering it.
Complainant claims Respondent has engaged in a pattern of bad faith as evidenced by multiple prior adverse UDRP decisions. Policy ¶ 4(b)(ii) provides “[Respondent] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” While Respondent has a history of losing domain name disputes, Complainant was not prevented from reflecting its mark in a domain name. This means Complainant has failed on this point. The mere fact Respondent has lost other unrelated UDRP cases does not raise a presumption Respondent’s defense of this case is unfounded.
Complainant claims Respondent’s use of the <targeet.com> domain name disrupts Complainant’s legitimate business because of the domain’s competing hyperlinks (hyperlinks which include: “Store at Walmart,” “Amazon.com® Official Site,” and “Wayfair Furniture Sale”). A respondent’s purported diversion of Internet users to the websites of competitors through hyperlinks related to a complainant’s legitimate business constitutes bad faith disruption under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Respondent’s <targeet.com> domain name was registered and is used in violation of Policy ¶ 4(b)(iii).
Complainant claims Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent’s site misleads Internet users by displaying content and keywords directly related to Complainant’s business and displaying a correctly spelled version of Complainant’s mark on the website at the domain name. This suggests the misspelling was intentional and designed to capitalize on Complainant’s famous mark and its related business. Respondent likely received “click through” revenue for its dynamic parking page at its web site, even if Respondent only gets free web hosting. This constitutes bad faith under Policy ¶ 4(b)(iv) by using the <targeet.com> domain name to attract and mislead consumers for its own profit.
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 that the <targeet.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, February 15, 2016
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