Target Brands, Inc. v. Host Master / Transure Enterprise Ltd
Claim Number: FA1907001852551
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Washington DC, USA. Respondent is Host Master / Transure Enterprise Ltd (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetcontests.com>, registered with Above.com Pty Ltd..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2019; the Forum received payment on July 17, 2019.
On July 18, 2019, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <targetcontests.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 July 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2019 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@targetcontests.com. Also on July 19, 2019, 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 August 9, 20129, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is one of the most famous brands in the field of retail department stores. Complainant has rights in the TARGET trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 845,193, registered Feb. 27, 1968). Respondent’s <targetcontests.com> domain name is identical or confusingly similar to Complainant’s TARGET trademark. Respondent uses the TARGET trademark in its entirety and adds the descriptive term “contests” along with the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the <targetcontests.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to redirect to a webpage that attempts to install malicious software. Respondent’s domain name also resolves to a series of rotating webpages of Complainant’s competitors.
Respondent registered and used the <targetcontests.com> domain name in bad faith as Respondent has engaged in a pattern of bad faith registrations as evidenced by Respondent’s previous adverse UDRP decisions. Respondent also seeks commercial gain from the disputed domain name by redirecting internet users to third-party webpages. Respondent also had knowledge of Complainant’s TARGET trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
U.S. trademark No. 3,229,570 TARGET (fig), registered April 17, 2007 for services in classes 35, 36, 40 and 41;
European Community Trade Mark No. 001771229 TARGET (word), registered March 21, 2007 for services in classes 35 and 42; and
European Community Trade Mark No. 002733228 TARGET (word), registered September 20, 2010 for goods and services in classes 25, 28, and 35
Complainant also refers to two other TARGET trademarks, registered by the USPTO in 1968, however – based on the documentation provided by the Complainant – they are in the name of Target Stores, Inc, and will thereby not be considered by the Panel.
The disputed domain name <targetcontests.com> was registered on April 30, 2016
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the TARGET trademark based upon registration of the trademark with the USPTO (e.g. Reg. No. 3,229,570 TARGET, registered April 17, 2007), as well as registrations with the EUIPO. Registration with the USPTO is sufficient to establish rights in a trademark per 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.”). Therefore, the Panel finds that Complainant has rights in the TARGET trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <targetcontests.com> domain name is identical or confusingly similar to Complainant’s TARGET trademark as the disputed domain name uses the TARGET trademark in its entirety and adds the descriptive term “contests” along with the “.com” gTLD. Registration of a domain name that includes a fully formed trademark and adds a descriptive word and gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”).
The Panel notes that the added descriptive word “contests” is closely related to the Complainant’s business and history, and thereby only further indicates a relationship with the Complainant and the Complainant’s trademark TARGET. The Panel therefore finds the disputed domain name is confusingly similar to the TARGET mark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 Respondent lacks rights or legitimate interest in the <targetcontests.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the TARGET trademark or register domain names using Complainant’s trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Additionally, lack of authorization to use a complainant’s trademark may indicate 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 for the disputed domain name lists the registrant as “Host Master/Transure Enterprise” and there is no other evidence to suggest that Respondent was authorized to use the TARGET trademark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to redirect to a webpage that attempts to install malicious software. Using a disputed domain name that attempts to download malware onto a user’s device is definitely not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant has provided the Panel with screenshot of Respondent’s resolving domain name that shows that the user needs a software update upon accessing the site. The Panel agrees with the Complainant’s conclusion that Respondent attempts to install malicious software via the disputed domain name, and therefore the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also contends that Respondent’s domain name resolves to a series of rotating webpages, including Complainant’s competitors. Use of a disputed domain name to resolve to a rotating series of webpages is not a bona fide offering of goods or services or 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). Therefore, the Panel finds that that use is further and clear base for the conclusion that Respondent has failed to make a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <targetcontests.com> domain name in bad faith as Respondent has engaged in a pattern of bad faith registrations as evidenced by previous adverse UDRP decisions against Respondent.
Prior history of adverse UDRP decisions may be evidence of bad faith per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant has provided the Panel with a list of no less than 218 previous UDRP panel decisions where Respondent was involved. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant claims that Respondent seeks commercial gain from the <targetcontests.com> domain name by redirecting internet users to third-party webpages. Use of a disputed domain name that takes diverts internet users to third-party webpages for the purpose of commercial gain may be evidence of bad faith per Policy ¶ 4(b)(iv). See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to unrelated third-party websites in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Here, Complainant has provided the Panel a series of screenshots that show multiple different resolving webpages when accessing the disputed domain name. Therefore, the Panel agrees with Complainant and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had knowledge of Complainant’s TARGET trademark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the trademark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of disputed domain name that includes a well-known trademark may be evidence of actual knowledge. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA trademark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its trademark was well-known and famous).
Here, Complainant has provided the Panel with information pertaining to its use of the TARGET trademark over the years. Based on the information provided by the Complainant, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the TARGET trademark which constitutes bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetcontests.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 14, 2019
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