Target Brands, Inc. v. Jin Sub Lee and
Baronis
Claim
Number: FA0508000536860
Complainant, Target Brands, Inc. (“Complainant”), is
represented by Jodi A. DeSchane of Faegre & Benson LLP,
2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN 55402. Respondent is Jin Sub Lee and Baronis (“Respondent”), 45-25 Namsan-dong 2-ga
Jung-gu Seoul, Seoul, jung gu, 100042, kr..
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <target-mall.com>, registered with Communigal
Communications Ltd.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 11, 2005.
On
August 16, 2005, Communigal Communications Ltd confirmed by e-mail to the
National Arbitration Forum that the <target-mall.com> domain name
is registered with Communigal Communications Ltd and that Respondent is the
current registrant of the name. Communigal
Communications Ltd has verified that Respondent is bound by the Communigal
Communications Ltd registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
August 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
6, 2005 by which Respondent could file a response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@target-mall.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 13, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed John
J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration Forum has discharged its responsibility
under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) “to employ reasonably available means calculated to
achieve actual notice to Respondent.”
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration Forum's Supplemental Rules and any rules and principles of law that
the Panel deems applicable, without the benefit of any response from
Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <target-mall.com>
domain name is confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or
legitimate interests in the <target-mall.com> domain name.
3. Respondent registered and used the <target-mall.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Target Brands, Inc., is a licensor of Target Corporation, which, since 1962,
has been operating a chain of “Target” retail discount department stores. Currently, Complainant operates more than
1,300 stores in forty-seven states.
Complainant holds numerous registrations for its TARGET mark with the
United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No.
2,793,901 issued December 16, 2003).
Additionally, Complainant operates a website at the <target.com>
domain name. As a result of extensive
use and advertising, Complainant’s mark enjoys a high degree of recognition and
distinctiveness.
Respondent
registered the <target-mall.com> domain name on November 11,
2004. Respondent has been using the
disputed domain name to connect users to a retail website that offers products
for sale, including products similar to those sold by Complainant. Additionally, Respondent’s website features
Complainant’s trademarked spokesdog, the Bullseye Dog, and the TARGET and
Bullseye Design in the exact font and colors used by Complainant.
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.”
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.”).
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.
Panels have
consistently held that a complainant’s registration of its mark with the USPTO
is sufficient to establish the complainant’s rights in that mark. In Innomed
Techs., Inc. v. DRP Services, FA 221171
(Nat. Arb. Forum Feb. 18, 2004), for example, a panel held that, “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” Id. Likewise, in Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003), a
panel held, “Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”
Id. Thus, the Panel
concludes that Complainant’s registrations of its TARGET mark with the USPTO
are sufficient to establish Complainant’s rights in the mark.
Complainant
argues that the <target-mall.com> domain name is confusingly
similar to Complainant’s TARGET mark, as it wholly incorporates Complainant’s
mark and adds a hyphen and the common term “mall.” The Panel finds that neither the addition of a hyphen nor the
term “mall” is sufficient to distinguish Respondent’s domain name from
Complainant’s mark. See Sports Auth.
Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The
addition of a hyphen to Complainant's mark does not create a distinct
characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar
analysis.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of the complainant
combined with a generic word or term).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
disputed domain names. The Panel holds
that Complainant’s assertion establishes a prima facie case and shifts
the burden to Respondent. To meet its
burden, Respondent must provide the Panel with evidence that it does have
rights or legitimate interests in the disputed domain names. Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Additionally,
Complainant argues that Respondent is not commonly known by the disputed domain
name. In fact, Respondent’s WHOIS
information indicates that Respondent is known as “Jin Sub Lee.” Because Respondent did not provide the Panel
with a response, the Panel accepts Complainant’s allegation that Respondent is
not commonly known by the disputed domain names as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence). Because Respondent did not provide any
evidence to prove that it is commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii), the Panel infers that it does not have rights or
legitimate interests in the <target-mall.com> domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
Moreover,
Complainant contends that Respodent is benefiting financially from the
confusing similarity of the disputed domain name to Complainant’s mark by using
the domain name to sell electronics and other products available at
Complainant’s stores or through Complainant’s website. The Panel finds that misdirecting Internet users
is neither 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the disputed domain names to divert Internet
users to its website, which sells goods similar to those that Complainant sells
in its stores and through its website.
Moreover, Respondent’s use of the TARGET mark and Bullseye Design on its
website creates an even stronger likelihood of confusion. The Panel holds that Respondent is creating
a likelihood of confusion for its own commercial gain. Thus, the Panel concludes that such use is
evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also MathForum.com,
LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent registered a domain name
confusingly similar to the complainant’s mark and the domain name was used to
host a commercial website that offered similar services offered by the
complainant under its mark).
Moreover,
Complainant argues that Respondent had actual knowledge of Complainant’s rights
in the mark due to the fame of Complainant’s mark and the obvious link between
Complainant’s and the content of Respondent’s website. See Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the link between the complainant’s
mark and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the Complainant’s mark when it registered the
subject domain name”). The Panel holds
that Respondent’s actual knowledge of Complainant’s rights in the TARGET mark
at the time of registration is evidence of bad faith use and registration under
Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
The Panel finds
that Complainant has satisfied 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 <target-mall.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: September 27, 2005
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