Target Brands, Inc. v. Spiral Matrix
Claim Number: FA0601000624926
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 Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret, KE 30100 Kenya.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <targetsstore.com>, <targetsdepartmentstore.com> and <targetsshoppingstore.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 13, 2006.
On January 12, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <targetsstore.com>, <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 January 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 2006 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@targetsstore.com, postmaster@targetsdepartmentstore.com and postmaster@targetsshoppingstore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 <targetsstore.com>, <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names are confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <targetsstore.com>, <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names.
3. Respondent registered and used the <targetsstore.com>, <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands, Inc., licenses its TARGET mark to Target Corporation, of which Target Stores is a division. Since 1962, Target Corporation has used the TARGET mark to operate a chain of retail discount department stores. There are more than 1,300 TARGET stores throughout forty-seven states.
Complainant has registered its TARGET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 276,714 issued February 27, 1968). In addition, Complainant has registered several other marks related to its TARGET mark with the USPTO, and also holds trademark registrations and pending applications in several countries worldwide.
Complainant operates a website at the <target.com> domain name, which offers information and online shopping. Forbes Magazine has recognized the success of Complainant’s online retail business.
Respondent registered the <targetsstore.com> domain name on May 23, 2005. Internet users who access the <targetsstore.com> domain name are directed to an unfinished website with no active content. Respondent registered the <targetsdepartmentstore.com> domain name on June 9, 2005, and the <targetsshoppingstore.com> domain name on July 9, 2005. Internet users who access the <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names are redirected to a generic search engine with links to stores and other online shopping websites.
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.
Complainant asserts that it has established rights in the TARGET mark by registering the mark with the USPTO. The Panel finds that Complainant’s registration of the TARGET mark is sufficient to establish Complainant’s rights in the mark. See 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.”); 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <targetsstore.com>, <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names are confusingly similar to Complainant’s TARGET mark because the domain names incorporate Complainant’s mark in its entirety. The common and descriptive words “store,” “department store,” and “shopping store” have an obvious relationship with Complainant’s retail shopping business. The addition of these words to Complainant’s mark do not negate the confusingly similar nature of the domain names to Complainant’s mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <targetsstore.com>, <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence that Respondent is commonly known by the <targetsstore.com>, <targetsdepartmentstore.com> or <targetsshoppingstore.com> domain names, and there is no information in the WHOIS database showing that Respondent is commonly known by any of these names. Complainant asserts that it is not affiliated with Respondent. The Panel, therefore, concludes that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. 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 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).
Respondent is using the <targetsdepartmentstore.com>
and <targetsshoppingstore.com> domain names to redirect Internet
users to a search engine with links to other retailers. The Panel assumes that Respondent receives
payment in exchange for redirecting Internet users to these websites. Respondent’s use of domain names that are
confusingly similar to Complainant’s mark to divert Internet users to other
websites for Respondent’s own financial gain does not constitute a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name); see also Prudential Ins.
Co.of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15,
2001) (finding no rights or legitimate interests in the disputed domain name
where the respondent was using the complainant’s mark to redirect Internet
users to a website offering credit card services unrelated to those services
legitimately offered under the complainant’s mark).
Respondent’s <targetsstore.com> domain name,
which is also confusingly similar to Complainant’s TARGET mark, directs
Internet users to an unfinished website.
Such use of this disputed domain name does not constitute a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Rayne, FA 101465 (Nat. Arb. Forum
Dec. 17, 2001) (finding that the “under construction” page, hosted at the
disputed domain name, did not support a claim of right or legitimate interest
under Policy ¶ 4(a)(ii)); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum
July 25, 2000) (finding that the respondent’s failure to develop the site
demonstrates a lack of legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel assumes that Respondent receives payment for diverting Internet users to other commercial websites. Because Respondent is using the <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names to intentionally attract Internet users to these websites, the Panel infers that Respondent is taking advantage of the likely confusion between the disputed domain names and Complainant’s mark for Respondent’s own financial gain. Use of the disputed domain names in this manner constitutes 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); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Moreover, the <targetsstore.com> domain name
does not resolve to an active website.
The Panel finds that Respondent’s failure to make use of the disputed
domain name may support the inference of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible,
in certain circumstances, for inactivity by the Respondent to amount to the
domain name being used in bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetsstore.com>, <targetsdepartmentstore.com> and <targetsshoppingstore.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 24, 2006
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