Target Brands, Inc. v. E Travel Marketing
Claim Number: FA0602000647041
Complainant is Target Brands, Inc. (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP, 1700 Lincoln St., Suite 3200, Denver, CO 80203-4532. Respondent is E Travel Marketing (“Respondent”), PO Box 14928, Cincinnati, OH 45250.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <targetcoupons.com> and <targetcoupons.net>, registered with Tucows 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2006.
On February 17, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <targetcoupons.com> and <targetcoupons.net> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows 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 February 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 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@targetcoupons.com and postmaster@targetcoupons.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <targetcoupons.com> and <targetcoupons.net> domain names are confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or legitimate interests in the <targetcoupons.com> and <targetcoupons.net> domain names.
3. Respondent registered and used the <targetcoupons.com> and <targetcoupons.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands, Inc., owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TARGET mark. Complainant first registered the TARGET mark with the USPTO on February 27, 1968 (Reg. No. 845,193). Complainant also holds valid trademark registrations, or has trademark applications pending, for the TARGET mark throughout the world.
Complainant’s Target Stores division has operated a chain of retail discount department stores throughout the United States since 1962. Complainant also operates a commercial website located at the <target.com> domain name in connection with its business.
Respondent registered the <targetcoupons.com> and <targetcoupons.net> domain names on April 21, 1999. Respondent is using the <targetcoupons.com> domain name to operate a website offering links to third-party websites containing coupons and retail rebate offers. Respondent’s <targetcoupons.net> domain name does not resolve to an active website.
Upon being contacted via e-mail by Complainant regarding its registration and use of the <targetcoupons.com> and <targetcoupons.net> domain names, Respondent replied to Complainant by offering to sell the disputed domain name registrations to Complainant. However, Respondent later refused to sell the disputed domain name registrations to Complainant for only Respondent’s registration costs.
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’s trademark registrations of its TARGET mark with the USPTO establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). 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 VICORP Restaurants, Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
Complainant also establishes that Respondent’s <targetcoupons.com> and <targetcoupons.net> domain names are confusingly similar to Complainant’s TARGET mark. Respondent’s <targetcoupons.com> and <targetcoupons.net> domain names each incorporate Complainant’s mark in its entirety, adding only the generic term “coupons” and the generic top-level domain “.com” or “.net.” The addition of a generic, descriptive term related to Complainant’s business does not negate the confusing similarity between the disputed domain names and Complainant’s mark. See 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); 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). Moreover, the addition of a generic top-level domain does not avoid the creation of confusing similarity between Respondent’s domain names and Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant possesses the initial burden of establishing that Respondent has no rights or legitimate interests with respect to the disputed domain names under Policy ¶ 4(a)(ii). However, if Complainant sufficiently demonstrates a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Respondent registered the <targetcoupons.com> and <targetcoupons.net> domain names under the name “E Travel Marketing,” and there is no evidence to suggest that Respondent is commonly known by the <targetcoupons.com> or <targetcoupons.net> domain name. Consequently, the evidence on record fails to demonstrate that Respondent has established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
Respondent is using the <targetcoupons.com>
domain name, which is confusingly similar to Complainant’s TARGET mark, to
operate a website offering links to third-party websites featuring coupons and
retail rebates. The Panel infers that
Respondent receives click-through fees through the use of the <targetcoupons.com>
domain name. Other panels have found
that such use constitutes neither a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). In Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the respondent
registered and used a domain name confusingly similar to complainant’s mark to
redirect Internet traffic to a search-engine website, which provided links to
other third-party websites. However,
the panel found that respondent’s use of the disputed domain name did not
demonstrate a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). Therefore, Respondent’s use
of the disputed domain name to divert Internet users seeking Complainant’s
products and services to third-party websites fails to satisfy Policy ¶¶
4(c)(i) and 4(c)(iii). See Seiko
Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
Unlike its use of the <targetcoupons.com> domain name, Respondent is not utilizing the <targetcoupons.net> domain name to operate an active website and has not made any use of the domain name since registering it in 1999. In Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001), the respondent registered several domain names featuring complainant’s NIKE mark, but the domain names did not resolve to any active websites. Nevertheless, the panel found that respondent did not demonstrate rights or legitimate interests in the disputed domain names, because respondent did not use any of the disputed domain names in connection with any bona fide offering of goods or services. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way). In the present case, Respondent has failed to establish rights or legitimate interests in the <targetcoupons.net> domain name, because Respondent has failed to use the disputed domain name in connection with either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <targetcoupons.com> domain name
uses Complainant’s well-known TARGET mark to direct Internet users to a website
lacking any affiliation with Complainant.
As a result, the Panel finds that Respondent is using the <targetcoupons.com>
domain name to attract Internet users to Respondent’s website for commercial
gain by creating a likelihood of confusion between the disputed domain name and
Complainant’s mark. Therefore, in light of the evidence on record,
Respondent’s <targetcoupons.com> domain name has been
registered and is being used in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that
“[s]ince the disputed domain names contain entire versions of Complainant’s
marks and are used for something completely unrelated to their descriptive
quality, a consumer searching for Complainant would become confused as to
Complainant’s affiliation with the resulting search engine website” in holding
that the domain names were registered and used in bad faith pursuant to Policy
¶ 4(b)(iv)); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
Furthermore, upon
being contacted by Complainant regarding the <targetcoupons.com>
and <targetcoupons.net> domain names, Respondent offered to sell the disputed domain name registrations to
Complainant, but refused to accept Complainant’s offer of registration costs as
consideration. In World Wrestling Fed’n Entm’t., Inc. v.
Bosman, D99-0001 (WIPO Jan. 14, 2000), respondent registered a domain name
featuring complainant’s mark and offered to sell the disputed domain name
registration to complainant for a sum that exceeded respondent’s out-of-pocket
expenses. Consequently, the panel found
that respondent’s offer of sale constituted registration and use of the
disputed domain name in bad faith under Policy ¶ 4(b)(i). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. 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).”).
Last, Respondent has registered
the <targetcoupons.net> domain name, but is not using the
domain name in connection with a website or any other commercial use. Therefore, because the evidence on record
indicates that Respondent has been merely passively holding the <targetcoupons.net>
domain name since 1999, the Panel finds that Respondent has registered and is
using the <targetcoupons.net> domain name in bad faith under
Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that passive
holding of a domain name permits an inference of registration and use in bad
faith); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy).
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 <targetcoupons.com> and <targetcoupons.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 4, 2006
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