Target Brands, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1809001807097
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetpayandbeneftis.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2018; the Forum received payment on September 25, 2018.
On September 21, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <targetpayandbeneftis.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@targetpayandbeneftis.com. Also on September 25, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant, Target Brands, Inc., runs retail department stores that sell products and services related to groceries, pharmaceuticals, and personal care products. Complainant has rights in the TARGET mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 845,193, registered Feb. 27, 1968). Respondent’s <targetpayandbenefits.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s TARGET mark, adds the descriptive terms “pay and benefits,” and includes a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <targetpayandbenefits.com> domain name. Respondent is not authorized to use Complainant’s TARGET mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name which resolves to an “Automatic Rapid Redirection to Malware (“AARM”) (previously called a fast-flux DNS (“FFDNS”)) webpage that attempts to install malware.
Respondent registered and uses the <targetpayandbenefits.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration as it has a history of past, adverse UDRP decisions. Furthermore, Respondent attempts to attract, for commercial gain, users to the disputed domain name where it resolves to a ARRM/FFDNS webpage that installs malware. Respondent also registered the disputed domain name under a privacy service. Finally, Respondent had some knowledge of Complainant’s TARGET mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <targetpayandbeneftis.com> domain name.
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."
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.
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(f), 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 (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.”).
Complainant claims to have rights in the TARGET mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its USPTO registration for the TARGET mark (e.g., Reg. No. 845,193, registered Feb. 27, 1968). The Panel finds that Complainant has sufficiently demonstrated its rights in the TARGET mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <targetpayandbenefits.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the TARGET mark while adding descriptive terms and a gTLD. The addition of generic or descriptive terms and a gTLD to a complainant’s mark does not sufficiently mitigate any confusing similarity between the complainant’s mark and a disputed domain name. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). Here, Respondent wholly incorporates Complainant’s TARGET mark, adds the descriptive terms “pay and benefits”, and includes the “.com” gTLD. The Panel finds that Respondent’s <targetpayandbenefits.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights and legitimate interests in the <targetpayandbenefits.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the TARGET mark. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies Respondent as “Carolina Rodrigues” and no information of the record indicates that Respondent was authorized to use the Complainant’s TARGET mark. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further alleges the Respondent fails to use <targetpayandbenefits.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain name to lure internet users to a website that attempts to install malware on the user’s computer, and redirects internet users to Complainant’s competitor’s websites. Use of a disputed domain name to lure internet users into downloading malicious software or to redirect internet users to a website in direct competition with a complainant does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See
Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum Oct. 18, 2017) (holding that use of a domain name to redirect Internet users to a rotating series of third-party websites, some of which attempt to install malware on users’ computers, does not show the respondent has rights or legitimate interests in the domain name); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Complainant provides screenshots from two attempts to visit Respondent’s <targetpayandbenefits.com> domain name. The first attempt resolved to a webpage with a warning that the user must download a program. The second attempt resolved to a webpage of Walmart, which is a direct competitor of Complainant. The Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <targetpayandbenefits.com> domain in bad faith as Respondent engages in a pattern of cybersquatting. Specifically, Complainant states that Respondent engages in cybersquatting based on a history of adverse UDRP findings relating to cases where Respondent registered domain names that infringe on famous marks. Bad faith may be found per Policy ¶ 4(b)(ii) when a respondent has a history of adverse UDRP holdings, and is therefore a cyber squatter. See Zynga Inc. v. Ryan G Foo / PPA Media Services, FA 1650448 (Forum Jan. 14, 2016) (finding bad faith per Policy ¶ 4(b)(ii) because the complainant demonstrated the respondent had a history of adverse UDRP findings, holding: “Respondent is a serial cyber squatter.”). Here, Complainant provides a list of UDRP cases with decisions adverse to Respondent. The Panel finds that Respondent has engaged in cybersquatting, and has demonstrated bad faith use and registration of the <targetpayandbenefits.com> domain name.
Complainant contends Respondent uses the disputed domain name to lure internet users to a website that attempts to install malware on the user’s computer, and redirects internet users to Complainants competitor’s websites. Use of a disputed domain name to lure internet users into downloading malicious software or to redirect internet users to a website in direct competition with a complainant is evidence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also
Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant provides screenshots from two attempts to visit Respondent’s <targetpayandbenefits.com>. The first attempt resolved to a webpage with a warning that the user must download a program. The second attempt resolved to a webpage of Walmart, which is a direct competitor of Complainant. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <targetpayandbeneftis.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 30, 2018
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