DECISION

 

Target Brands, Inc. v. Oleksandr Haidash

Claim Number: FA2309002063935

 

PARTIES

Complainant is Target Brands, Inc. ("Complainant"), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Oleksandr Haidash ("Respondent"), Ukraine.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <target-weeklyad.com> ('the Domain Name'), registered with Regional Network Information Center, JSC dba RU-CENTER.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 28, 2023; Forum received payment on September 28, 2023.

 

On September 29, 2023, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to Forum that the <target-weeklyad.com> Domain Name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 29, 2023, Forum served the Complaint and all Annexes, including a Russian and English Written Notice of the Complaint, setting a deadline of October 19, 2023 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@target-weeklyad.com. Also on September 29, 2023, the Russian and English 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, Forum transmitted to the parties a Notification of Respondent Default in Russian and English.

 

On October 20, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language including the fact that the Domain Name points to a site in English, the Respondent owns a number of domain names that contain American brands that point to sites in English and the Respondent has been the subject of an adverse decision under the UDRP for registration of a domain name containing an American brand and pointed to a site in English. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

 

PARTIES' CONTENTIONS

A.       Complainant

The Complainant is the owner of the trade mark TARGET registered, inter alia, in the USA for retail services with first use in commerce recorded as 1962. It uses the url weeklyad.target.com.

 

The Domain Name registered in 2019 is confusingly similar to the Complainant's mark adding only generic term 'weekly ad', a hyphen and a gTLD .com which do not prevent such confusing similarity.

 

Respondent is not commonly known by the Domain Name and is not authorised by the Complainant.

 

To pass itself off as Complainant, Respondent's web site connected with the Domain Name uses the Complainant's logo and TARGET mark (including as a favicon), material from the Complainant's site, a similar colour scheme and menu headers to the Complainant's site, log in screens and a confusing disclaimer. The site also features advertisements for commercial gain.

 

Internet users have been duped into believing the Respondent's site is connected with the Complainant. This is not a bona fide offering of services or legitimate non commercial fair use. It is registration and use in bad faith, diverting internet users for commercial gain and disrupting the Complainant's business in full knowledge of the Complainant's rights.

 

The Respondent owns a number of other domain names containing American brands which point to sites purporting to be sites affiliated to those respective brands similar to the method of the Respondent in relation to the Domain Name. The Respondent has been the subject of an adverse decision under the UDRP in relation to the registration of a domain name containing an American brand and pointing to a site suggesting an affiliation with that brand.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark TARGET registered, inter alia, in the USA for retail services with first use in commerce recorded as 1962. It uses the url weeklyad.target.com.

 

The Domain Name registered in 2019 points to a site using the Complainant's TARGET mark and logo (including as a favicon), material from the Complainant's site, a similar colour scheme and menu headers to the Complainant's web site, log in screens and a confusing disclaimer so as to appear to be a site affiliated or owned by the Complainant. The site also features advertisements for commercial gain. Internet users have been duped into believing the Respondent's site is connected with the Complainant.

 

The Respondent owns a number of other domain names containing American brands which point to sites purporting to be sites of those respective brands. The Respondent has been the subject of an adverse decision under the UDRP in relation to the registration of a domain name containing an American brand and pointing to a site imitating an official site of the complainant in that case.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Domain Name in this Complaint registered in 2019 combines the Complainant's TARGET mark (registered, inter alia, in the USA for retail services with first use in commerce recorded as 1962) the generic term 'weekly ad', a hyphen and the gTLD .com.

 

The addition of a generic term and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD insufficient to distinguish a disputed domain name from a mark under Policy 4 (a) (i)). As such the Panel agrees that the addition of the generic term 'weekly ad' and the gTLD .com does not prevent confusing similarity between the Complainant's mark and the Domain Name. Nor does the addition of a hyphen. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July, 2003) ("The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).").

 

Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the web site is commercial so is not legitimate non commercial fair use.

 

The web site attached to the Domain Name uses the Complainant's TARGET mark and logo (including as a favicon), material from the Complainant's site, a similar colour scheme and menu headers to the Complainant's site, log in screens and a confusing disclaimer. The Complainant has adduced evidence that Internet users have been confused into thinking that the Respondent's site is an official site of the Complainant. As such this use cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) ("Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."). 

 

The Domain Name has been used for commercial advertising links which does not constitute a bona fide offering of goods or services or a legitimate non commercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of .. domain name resolves to a site containing .. advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering."

 

The Respondent has not answered this Complaint or offered any explanation or evidence to rebut the prima facie case evidenced by the Complainant herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

As found above the use made of the Domain Name in relation to the Respondent's site is confusing and disruptive and visitors to the site have reasonably believed the site was connected to or approved by the Complainant as it used the Complainant's TARGET mark and the Complainant's logo, material from the Complainant's web site and a similar colour scheme, similar menu headers to the Complainant's site and a confusing disclaimer. The use of the Complainant's logo and material from the Complainant's web site shows the Respondent has actual knowledge of the Complainant, its rights, business and services.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use). See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant's website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

The Panel also notes the adverse decision against the Respondent in another UDRP case and the ownership by the Respondent of other domain names containing American brands in which the relevant domain names were used for imitation sites similar to that in this case indicating a pattern of activity. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA 1520008 (Forum Nov. 7, 2013) (finding that the respondent's registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). See Health Republic Insurance Company v. Above.com Legal, FA 1622088 (Forum July 10, 2015) ("Complainant has provided evidence that Respondent has a history of UDRP .. decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).").

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paragraphs 4(b)(ii), (iii) and (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <target-weeklyad.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: October 22, 2023