Target Brands, Inc. v. Universal Banner Network, Inc.
Claim Number: FA0510000584872
Complainant is Target Brands, Inc. (“Complainant”), represented by Jodi A. DeSchane, of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN 55402. Respondent is Universal Banner Network, Inc. (“Respondent”), 7095 Hollywood Blvd, #772, Los Angeles, CA 90028.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <etargetshop.com>, <shopsontarget.com>, <target-deals.com>, <dealtarget.com>, and <dealtarget.net >, registered with Go Daddy Software, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 25, 2005.
On October 25, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <etargetshop.com>, <shopsontarget.com>, <target-deals.com>, <dealtarget.com>, and <dealtarget.net > domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 October 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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@etargetshop.com, postmaster@shopsontarget.com, postmaster@target-deals.com, postmaster@dealtarget.com, and postmaster@dealtarget.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <etargetshop.com>, <shopsontarget.com>, <target-deals.com>, <dealtarget.com>, and <dealtarget.net > domain names are confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <etargetshop.com>, <shopsontarget.com>, <target-deals.com>, <dealtarget.com>, or <dealtarget.net > domain names.
3. Respondent registered and used the <etargetshop.com>, <shopsontarget.com>, <target-deals.com>, <dealtarget.com>, and <dealtarget.net > domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands Inc., is a wholly owned subsidiary of Target Corporation, and is responsible for protection of brands it owns and licenses to Target Corporation. Complainant holds numerous valid United States trademark registrations for the TARGET mark, the Bullseye Design Mark, and the integrated TARGET and Bullseye Design mark. In particular, Complainant’s first registered the TARGET mark, Registration Number 845,193, with the U.S. Patent and Trademark Office (“USPTO”) on February 27, 1968. Complainant has registered many subsequent marks.
Complainant operates a chain of TARGET retail discount department stores, now numbering more that 1,300 stores in 47 states. Complainant is very active in electronic commerce, operating an information and on-line shopping site at the <target.com> domain name.
Respondent registered the <etargetshop.com> domain name on October 1, 2003, the <shopsontarget.com> domain name on June 14, 2002, the <target-deals.com> domain name on June 29, 2004, the <dealtarget.com> domain name on January 31, 2005, and the <dealtarget.net> domain name on November 17, 2003. Respondent’s domain names all refer to similar websites, which offer various products for sale such as electronics and household goods.
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.
The Panel finds that Complainant has established right in
its mark pursuant to the Policy by submitting its USPTO registrations for the
TARGET mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that <etargetshop.com>, <shopsontarget.com>,
<target-deals.com>, <dealtarget.com>, and <dealtarget.net
> domain names are confusingly similar to Comlainant’s mark. The only difference between the <etargetshop.com>
domain name and Complainant’s TARGET mark is the addition of the letter “e,”
and the word “shop.” The only
difference between the <shopsontarget.com> domain name and
Complainant’s TARGET mark is the addition of the words “shops” and “on.” The only difference between the <target-deals.com>,
<dealtarget.com>, and <dealtarget.net > domain names
and Complainant’s TARGET mark is the addition of the word “deal” or “deals”
and, in one instance, a hyphen. The
Panel finds that none of these differences significantly distinguish the
disputed domain names from the TARGET mark.
See Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO
Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and
<e-canadiantire.com> are confusingly similar to Canadian Tire’s
trademarks); Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the respondent’s domain name
combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business); Health Devices Corp. v. Aspen S
T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of
punctuation marks such as hyphens is irrelevant in the determination of
confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Respondent is appropriating Complainant’s mark to conduct a
business similar to Complainant’s; that is, Respondent is using the TARGET mark
in its domain name to sell a variety of goods over the Internet, competing with
Complainant’s on-line retail sales. The
Panel finds that Respondent’s appropriation of Complainant’s mark to present
itself on the Internet as a retailer, in competition with Complainant, is not a
bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use); Ultimate Elecs., Inc.
v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the
respondent's “use of the domain name (and Complainant’s mark) to sell
products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which indicates that Respondent
is commonly known by the disputed domain name.
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); 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).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark to compete
with Complainant—a major on-line retailer.
The Panel finds that wholly appropriating the TARGET mark to create an
on-line retail store is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); Hewlett
Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding
that the respondent registered and used the domain name primarily for the
purpose of disrupting the business of the complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to the complainant’s services under the OPENMAIL mark).
In addition, Respondent is appropriating Complainant’s mark
to sell goods, presumably for a profit.
The Panel finds that appropriating another’s mark for commercial gain is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where the respondent used the domain name, for
commercial gain, to intentionally attract users to a direct competitor of the
complainant); Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
The Panel finds that Complainant has satisfied the requirements of 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 <etargetshop.com>, <shopsontarget.com>, <target-deals.com>, < dealtarget.com>, and <dealtarget.net > domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 6, 2005
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