Target Brands, Inc. v. Forum LLC
Claim Number: FA0608000770317
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 Forum LLC (“Respondent”), P.O. Box 2331, Roseau, Roseau 00152 DM.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <targetbridalregistry.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 7, 2006.
On August 15, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <targetbridalregistry.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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@targetbridalregistry.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 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a wholly owned subsidiary of Target
Corporation, and is responsible for the protection of brands it owns and
licenses to Target Corporation and its various operating divisions.
Complainant, along with its subsidaries and parent
compainies, have operated a chain of retail discount department stores in the
United States since 1962, and currently has over 1,400 stores in forty-seven
states.
Complainant holds several longstanding registrations, both
internationally and with the United States Patent and Trademark Office
(“USPTO”), for the TARGET trademark (including USPTO Reg. No. 845,193, issued
February 27, 1968), and operates a website at <target.com>.
Complainant has also offered bridal registry services for
many years, both in its stores and through its website.
Respondent is not authorized to use Complainant’s TARGET
mark, and Respondent is not associated with Complainant in any way.
Respondent registered the <targetbridalregistry.com> domain name on June 14, 2002.
Respondent’s disputed domain name resolves to a website that displays links to third-party websites, some of which are in direct competition with Complainant’s business.
Respondent’s <targetbridalregistry.com> domain name is confusingly similar to Complainant’s TARGET mark.
Respondent does not have any rights or legitimate interests in the <targetbridalregistry.com> domain name.
Respondent registered and used the <targetbridalregistry.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s trademark registrations, both internationally and with the USPTO sufficiently establish Complainant’s rights in 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.” See also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002): "Panel decisions have held that registration of a mark is prima facie evidence of validity,….".
Respondent’s <targetbridalregistry.com> domain name is confusingly similar to Complainant’s TARGET mark inasmuch as it uses Complainant’s mark in its entirety with the mere addition of the generic words “bridal registry,” words that describe a service long offered by Complainant. In Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), a panel found confusing similarity where a respondent’s domain name combined a complainant’s mark with a generic term that had an obvious relationship to that complainant’s business. See also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to a complainant's mark since it merely adds the word “auction” used in its generic sense). Here the addition of two words that describe a service offered by Complainant is not enough to negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant must establish that Respondent lacks any rights or legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, so that Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that 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 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).
Complainant asserts that Respondent is not authorized to use Complainant’s TARGET mark and that Respondent is not associated with Complainant in any way. Respondent’s WHOIS information also does not suggest that Respondent is commonly known by the <targetbridalregistry.com> domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), a panel found no rights or legitimate interests where a respondent was not commonly known by the mark there in issue and had never applied for a license or permission from a complainant to use the trademarked name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where, among other things, that respondent is not commonly known by a competing mark).
Moreover, it is undisputed that Respondent uses the disputed domain name to operate a website that displays links to third-party websites, some of which are in competition with the business of Complainant. In these circumstances, we may safely presume that Respondent is using the <targetbridalregistry.com> domain name to earn click-through fees from the links displayed on the corresponding website. Such use 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that a respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that complainant’s competitors, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny Complainant’s allegation that
Respondent uses the <targetbridalregistry.com> domain name to
divert Internet users to a website that displays links to third-party websites,
some of which are in direct competition with Complainant’s business. We infer
from this that Respondent uses the disputed domain name for its commercial
benefit through the receipt of click-through fees for the links displayed on
the corresponding website. This use of
Complainant’s mark in the <targetbridalregistry.com> domain
name is capable of creating a likelihood of confusion as to the possible
affiliation of Complainant with the disputed domain name. Such use constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See,
for example, Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003):
Respondent's prior use of the <mailonsunday.com>
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the
domain name provided links to Complainant's competitors and Respondent
presumably commercially benefited from the misleading domain name by receiving
‘click-through-fees.
See
also Am. Online, Inc. v.
Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
bad faith where a respondent registered and used a domain name confusingly
similar to a complainant’s mark in order to attract users to a website
sponsored by that respondent).
To this may be added the fact that it appears from the
record before us that Respondent registered the contested domain name with
either actual or constructive knowledge of Complainant’s rights in the TARGET mark
by virtue of Complainant’s prior registrations of the mark with the pertinent
national authorities worldwide.
Registration and use of a confusingly similar domain name despite such
actual or constructive knowledge, without more, evidences bad faith within the
meaning of Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), and Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <targetbridalregistry.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 21, 2006
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