Target Brands, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1903001834194
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetpayandbenifits.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2019; the Forum received payment on March 14, 2019.
On March 19, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <targetpayandbenifits.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings 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 March 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2019 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@targetpayandbenifits.com. Also on March 19, 2019, 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 April 12, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is a well-known leading retail department store outlet based in the United States. Complainant has rights in the TARGET trademark based upon a number of trademark registrations, such as the registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 845,193, registered Feb. 27, 1968), and European Union Trademark Registrations Office. Respondent’s <targetpayandbenifits.com> domain name is confusingly similar to Complainant’s trademark because it wholly incorporates Complainant’s TARGET trademark, adds the descriptive terms “pay and benifits” and includes the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <targetpayandbenifits.com> domain name. Respondent is not authorized to use Complainants TARGET trademark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name which resolves to an “Automatic Rapid Redirection to Malware” (“AARM”) webpage that attempts to install malware.
Respondent registered and uses the <targetpayandbenifits.com> domain name in bad faith. Respondent is a well-known cybersquatter, and has engaged in a pattern of bad faith registration as it has a history of past adverse UDRP decisions. Furthermore, Respondent attempts to attract, for commercial gain, users to the disputed domain name where it resolves to an ARRM/FFDNS webpage that installs malware. Respondent also registered the disputed domain name under a privacy service. Finally, Respondent had some knowledge of Complainant’s TARGET trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
On March 19, 2019, the Complainant submitted an updated version of Exhibit F of the Complaint to the Forum, correcting a typographical error.
The Complainant is the owner of the following trademark registrations:
U.S. Trademark Registration No 3,229,570 TARGET (fig), registered April 17, 2007 for services in classes 35, 36 and 40;
European Union Trade Mark Registration No 001771229 TARGET (word), registered March 21, 2007 for services in classes 35 and 42; and
European Union Trade Mark Registration No 002733228 TARGET (word), filed on June 13, 2002, and registered September 20, 2010 for goods and services in classes 25, 28 and 35.
Complainant also refers to U.S. Trademark Registrations No 845,615 TARGET (fig) and No 845,193 TARGET (fig), and has provided copies of the Certificates of Registration. The Panel notes that both these trademarks - as shown by the information provided by the Complainant - are registered in the name of Target Stores, Inc., not in the name of Target Brands, Inc. Although it may be that the registered owner of these trademarks is commercially related to the Complainant, or even that these two trademark registrations have been assigned to the Complainant, in the absence of such information or clarification from the Complainant, the Panel will not take these two registrations in consideration.
The <targetpayandbenifits.com> domain name was registered September 2, 2009
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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the TARGET trademark based upon registrations with the EUIPO (e.g. Reg. No. 001771229, registered on March 21, 2007) and USPTO (e.g. Reg. No. 3,229,570, registered April 17, 2007).
Registration of a trademark with multiple trademark national or international offices is sufficient to establish rights in said trademark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Therefore, the Panel finds that Complainant has rights in the TARGET trademark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <targetpayandbenifits.com> domain name is confusingly similar to Complainant’s trademark as it wholly incorporates the TARGET trademark while adding descriptive terms “pay and benifits” and a gTLD “.com”. The addition of generic or descriptive terms and a gTLD to a complainant’s trademark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). In this case, the added descriptive words “pay and benefits” may even swell be seen as related directly to the Complainant’s services. Therefore, the Panel agrees with the Complainant and find Respondent’s <targetpayandbenifits.com> domain name to be confusingly similar to the Complainant’s TARGET trademark.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <targetpayandbenifits.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the TARGET trademark. Where a response is absent, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS information of record identifies Respondent as “Domain Administrator / Fundacion Privacy Services LTD” or “Dezider Banga” and no information of the record indicates that Respondent was authorized to use the Complainant’s TARGET trademark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent fails to use the <targetpayandbenifits.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Use of a domain name to redirect Internet users to a rotating series of third-party websites, some of which attempt to install malware on users’ computers, does indeed not show the respondent has rights or legitimate interests in the domain name. See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum Oct. 18, 2017) (holding that use of a domain name to redirect Internet users to a rotating series of third-party websites, some of which attempt to install malware on users’ computers, does not show the respondent has rights or legitimate interests in the domain name). Based on the fact provided by the Complainant, showing that Respondent uses the disputed domain name to lure internet users to a website that attempts to install malware on the user’s computer, and redirects internet users to Complainant’s competitor’s websites, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent registered and uses the <targetpayandbenifits.com> domain in bad faith because Respondent illustrates a pattern of bad faith registrations. Evidence that a respondent owned various domain names infringing on famous third-party trademarks and previous adverse UDRP decisions can evince bad faith registration under Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Here, Complainant provides a screenshot of a UDRP search illustrating the Respondent’s UDRP history, which have all resulted in transfer. Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith registrations.
Complainant further asserts that Respondent uses the <targetpayandbenifits.com> domain name to attract internet users for commercial gain via an AARM scheme by creating a likelihood of confusion with the Complainant’s TARGET trademark. Bad faith registration has been found under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). In this case, the Complainant asserts that the disputed domain resolves to the websites of third parties who mention Complainant, or to Complainant’s own website. Thus, the Panel finds that Respondent has engaged in bad faith registration under Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent had actual notice of Complainant’s rights in the TARGET trademark as the result of Complainant’s extensive use of the trademark predating the date on which respondent registered the disputed domain name <targetpayandbenifits.com>. Panels have found that a respondent’s appropriation of a complainant’s trademark was a clear intent to trade upon complainant’s reputation and goodwill in order to confuse Internet users, thus constituting actual knowledge of complainant’s trademark prior to registration and bad faith per Policy ¶ 4(a)(iii).”). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). The same situation is noted in the present case, and thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the TARGET trademark under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetpayandbenifits.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 14, 2019
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