Target Brands, Inc. v. Patrice Zingaro
Claim Number: FA1908001855507
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, Washington DC, USA. Respondent is Patrice Zingaro (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tarqets.com>, registered with Google 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2019; the Forum received payment on August 2, 2019.
On August 2, 2019, Google LLC confirmed by e-mail to the Forum that the <tarqets.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 August 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@tarqets.com. Also on August 6, 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 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant operates retail department stores. Complainant has rights in the TARGET mark through its registrations of the mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 845,193, registered Feb. 27, 1968). See Compl. Ex. E-3. Respondent’s <tarqets.com> domain name is confusingly similar to Complainant’s mark as Respondent merely substitutes the letter “q” for the letter “g”, adds the letter “s” and the “.com” generic top-level domain (“gTLD”).
ii) Respondents has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is using the disputed domain name to send phishing emails to Complainant’s customers to pay fake invoices. Additionally, Respondent’s disputed domain name resolves to an inactive, parked website.
iii) Respondent registered and used the disputed domain name in bad faith as Respondent attempts to attract, for commercial gain, users to the disputed domain name by using an email address in connection with a phishing scheme. Furthermore, Respondent fails to actively use the disputed domain name. Respondent also failed to respond to Complainant’s cease-and-desist letter. Respondent was also hiding its identity through a privacy service. Finally, Respondent had knowledge of Complainant’s rights in the TARGET mark prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on June 24, 2019.
2. Complainant has established rights in the TARGET mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 845,193, registered Feb. 27, 1968).
2. The disputed domain name’s resolving webpage cannot be opened.
4. Respondent sent emails Complainant’s customers seeking payment for fake invoices.
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”).
Complainant contends that Complainant has rights in the TARGET mark through its registration of the mark with the USPTO (e.g., Reg. No. 845,193, registered Feb. 27, 1968). See Amend. Compl. Ex. E-3. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the TARGET mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <tarqets.com> is confusingly similar to Complainant’s mark as Respondent merely substitutes the letter “q” for the letter “g”, adds the letter “s” and the “.com” gTLD. Merely replacing a letter in a mark with another letter and adding a gTLD may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Additionally, merely adding the letter “s” to a complainant’s mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
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 has no rights or legitimate interests in the <tarqets.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under 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 to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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 Panel notes the WHOIS of record identifies the Respondent as “Patrice Zingaro” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Amend. Compl. Ex. B. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to send phishing emails to Complainant’s customers. Using a disputed domain name to send emails with the purpose of phishing for personal or financial information may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Here, Complainant provides a copy of the emails sent by Respondent to Complainant’s customers seeking payment for fake invoices. See Compl. Ex. F-2. Therefore, the Panel finds Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues Respondent has no rights or legitimate interests in the disputed domain name as Respondent is inactively holding the disputed domain name. Where response is lacking, allowing a disputed domain name to resolve to an inactive webpage may not be establish rights or legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the disputed domain name’s resolving webpage, showing that the page cannot be opened. See Compl. Ex. F-1. Therefore, the Panel finds Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent’s bad faith registration and use of the disputed domain name is demonstrated by its use of an email address associated with the domain name to send fake invoices to Complainant’s customers. Registration and use of a disputed domain name for an email address to deceive Internet users associated with a complainant for the purpose of phishing for personal or financial information can be evidence of bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant provides a copy of the emails sent by Respondent to Complainant’s customers seeking payment for fake invoices. See Compl. Ex. F-2. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues Respondent registered and used the disputed domain name in bad faith as the webpage for the disputed domain name is inactively held. Where response is lacking, registration and subsequent use of a disputed domain name that merely resolves to an inactive webpage may be evidence of bad faith under Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Complainant provides a screenshot of the disputed domain name’s resolving webpage, showing that the page cannot be opened. See Compl. Ex. F-1. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's TARGET mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel notes that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel infers due to the fame of Complainant's mark that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of 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.”). Complainant further asserts that Respondent’s use of the disputed domain name to pass off as Complainant through an email phishing scheme indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tarqets.com> domain name be TRANSFERRED from Respondent to Complainant.
September 7, 2019, Panelist
Dated: Ho Hyun Nahm, Esq.
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