Target Brands, Inc. v. Janice Rodgers
Claim Number: FA0612000862832
Complainant is Target Brands, Inc. (“Complainant”), represented by Lisa
C. Walter, of Faegre & Benson, LLP, 1700 Lincoln
Street, Suite 3200, Denver, CO 80203-4532. Respondent is Janice Rodgers (“Respondent”), 3500 University Bl. N., 706B,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <supertargetstore.com> and <supertargetstores.com>, registered with Go Daddy Software, 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
On
On December 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2007 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@supertargetstore.com and postmaster@supertargetstores.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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:
Complainant has operated a
chain of retail discount department stores since 1962.
Complainant now operates more
than 1,400 stores in forty-seven states under its family of TARGET marks.
Complainant also uses its mark
SUPER TARGET in connection with retail department store sales, services and
online retail services.
Complainant holds a valid registration
with the United States Patent and Trademark Office (“USPTO”) for the SUPER
TARGET service mark (Reg. No. 1,961,031, issued March 5, 1996).
Respondent is not authorized to use Complainant’s SUPER TARGET mark and that Respondent is not associated with Complainant in any way.
Respondent registered the <supertargetstore.com>
and <supertargetstores.com>
domain names on
Respondent’s domain names resolve to websites that display a variety of hyperlinks to third-party websites, both related and unrelated to the business of Complainant.
Respondent’s <supertargetstore.com> and <supertargetstores.com> domain names are confusingly similar to Complainant’s SUPER TARGET service mark.
Respondent does not have any rights or legitimate interests in the domain names <supertargetstore.com> and <supertargetstores.com>.
Respondent registered and used the domain names <supertargetstore.com> and <supertargetstores.com> 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 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 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 a 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 registration of the SUPER TARGET service mark with
the USPTO sufficiently establishes Complainant’s rights in that mark. See,
for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
And Respondent’s <supertargetstore.com>
and <supertargetstores.com>
domain names are confusingly similar to Complainant’s SUPER TARGET mark as they
employ Complainant’s mark in its entirety with the mere addition of the word
“store” or “stores”, which have an obvious relationship to Complainant’s
business. Such additions do not negate
the confusing similarity between Complainant’s mark and Respondent’s disputed
domain names under Policy ¶ 4(a)(i). See Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where a respondent’s domain name combines a complainant’s
mark with a generic term that has an obvious relationship to that complainant’s
business); see also Marriott Int’l,
Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks
rights or legitimate interests with respect to the <supertargetstore.com> and
<supertargetstores.com> domain names. However, once Complainant makes out a prima
facie case, the burden of proof shifts, and Respondent must therefore 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, where a complainant has asserted
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
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).
We also note, for purposes of Policy ¶ 4(c)(ii), that Respondent’s
WHOIS information does not indicate that Respondent is commonly known by the
disputed domain names, and that there is no other evidence in the record to
suggest that Respondent is commonly known by the domain names <supertargetstore.com> and <supertargetstores.com>. Moreover, Complainant asserts, and Respondent
does not deny, that Respondent is not authorized to use Complainant’s SUPER
TARGET mark and that Respondent is not associated with Complainant in any
way. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000), a panel found no rights or legitimate interests where the 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
also Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum
It is also undisputed that Respondent is using the <supertargetstore.com> and <supertargetstores.com> domain names to operate websites that display hyperlinks to various third-party websites, presumably for the commercial benefit of Respondent through the accrual of click-through fees. 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites, unrelated to a 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
It may safely be presumed that Respondent receives
click-through fees for the hyperlinks displayed on the website that resolves
from the domain names <supertargetstore.com>
and <supertargetstores.com>. We are also satisfied that Respondent’s
disputed domain names create a likelihood of confusion as to the possibility of
Complainant’s affiliation with the disputed domain names and corresponding
websites. In Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum
In addition, it appears that Respondent registered the
contested domain names with at least
constructive knowledge of Complainant’s rights in the service mark SUPER
TARGET by virtue of Complainant’s prior
registration of that mark with the pertinent national authorities. Registration and use of a confusingly similar
domain name despite such knowledge evidences bad faith registration and use of
the domain name pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v.
DDI Sys.,
FA 124506 (Nat. Arb. Forum
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 domain names <supertargetstore.com> and <supertargetstores.com> be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated:
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