Target Brands, Inc. v. Ray Quiban d/b/a Cashflow Direct
Claim Number: FA0610000823122
Complainant is Target Brands, Inc. (“Complainant”), represented by Lisa
C. Walter of Faegre & Benson, LLP, 1700 Lincoln
St., Suite 3200, Denver, CO, 80202-4004.
Respondent is Ray Quiban d/b/a Cashflow Direct (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <etargetshopping.com>, <targetallday.com>, <targettoyland.com>, <targetonthespot.com>, <target4less.com> and <pamstarget.com>, registered with Enom, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 18, 2006; the National Arbitration Forum received a hard copy of the Complaint October 20, 2006.
On October 18, 2006; and October 23, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <etargetshopping.com>, <targetallday.com>, <targettoyland.com>, <targetonthespot.com>, <target4less.com> and <pamstarget.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 2006, 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@etargetshopping.com, postmaster@targetallday.com, postmaster@targettoyland.com, postmaster@targetonthespot.com, postmaster@target4less.com and postmaster@pamstarget.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain names that Respondent registered, <etargetshopping.com>, <targetallday.com>, <targettoyland.com>, <targetonthespot.com>, <target4less.com> and <pamstarget.com>, are confusingly similar to Complainant’s TARGET mark.
2. Respondent has no rights to or legitimate interests in the <etargetshopping.com>, <targetallday.com>, <targettoyland.com>, <targetonthespot.com>, <target4less.com> and <pamstarget.com> domain names.
3. Respondent registered and used the <etargetshopping.com>, <targetallday.com>, <targettoyland.com>, <targetonthespot.com>, <target4less.com> and <pamstarget.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Target Brands,
Inc., together with its parent companies and subsidaries, has operated a chain
of retail discount department stores since 1962. Complainant currently has some 1,400 stores
in forty-seven states. Complainant holds
several registrations with the United States Patent and Trademark Office
(“USPTO”) for its TARGET mark (Reg. No. 845,193 issued February 27, 1968), as
well as numerous international trademark registrations. Complainant additionally operates a website
at the <target.com> domain name.
Respondent registered the <etargetshopping.com> domain name April 21, 2006, the <targetallday.com> domain name January 31, 2006, the <targettoyland.com> domaina name March 8, 2006, the <targetonthespot.com> domain name April 14, 2006, the <target4less.com> domain name December 21, 2005 and the <pamstarget.com> domain name September 22, 2005. Respondent’s <etargetshopping.com> and <pamstarget.com> domain names resolve a website at the <cfdshopping.com> domain name that displays Complainant’s logo and copyrighted images and hyperlinks to Complainant’s website as well as to websites that are in direct competition with Complainant. The <targetallday.com>, <targettoyland.com>, <targetonthespot.com>and <target4less.com> domain names resolve to a websites that have no active use.
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 will draw such inferences as the Panel 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 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant’s registrations with the USPTO sufficiently establish Complainant’s rights in the TARGET mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The disputed domain names that Respondent registered, <etargetshopping.com>, <targetallday.com>, <targettoyland.com>,
<targetonthespot.com>, <target4less.com> and <pamstarget.com>,
are confusingly similar to Complainant’s TARGET mark as they contain
Complainant’s mark in its entirety with the addition of common, generic terms,
some of which have an obvious relationship with Complainant’s business. Additionally, the <etargetshopping.com> domain
name adds the letter “e” to the front of the mark, which is another addition
that does not negate the confusing similarity between Respondent’s disputed
domain names and Complainant’s mark.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain names. Complainant alleged that Respondent lacks such rights to and legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”).
Two of the disputed domain names that Respondent registered,
<etargetshopping.com> and <pamstarget.com> resolve to a
website at <cfdshopping.com> that displays Complainant’s logo and
copyrighted images along with hyperlinks to Complainant’s website as well as to
websites that are in direct competition with Complainant. The Panel finds that such use of the disputed
domain names is an attempt to pass-off this website as Complainant’s and that
it 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 Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that the respondent attempts to pass itself off as the complainant
online, which is blatant unauthorized use of the complainant’s mark and is
evidence that the respondent has no rights or legitimate interests in the
disputed domain name); see also Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb. Forum
Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
The remaining four disputed domain names, <targetallday.com>, <targettoyland.com>, <targetonthespot.com>and <target4less.com>, resolve to websites that are not being actively used, but are holding pages that display text regarding “Red Hat Enterprise Linux Test Page.” Such inactive use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith by
registering and using the disputed domain names. The Panel finds that Respondent registered
the disputed domain names for the commercial benefit of Respondent in an
attempt to profit from the goodwill attached to Complainant’s mark. Additionally, the disputed domain names are
capable of creating a likelihood of confusion as to the source and affiliation
of Complainant with the disputed domain names and corresponding websites. Such use constitutes bad faith registration
and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain); see also Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used a domain name confusingly similar to the
complainant’s mark to attract users to a website sponsored by the respondent).
Furthermore, the use of
the <etargetshopping.com> and <pamstarget.com> domain names
to display Complainant’s name and logo, as well as to redirect Internet users
attempting to locate Complainant’s website to direct competitors of
Complainant, constitutes disruption and is evidence of bad faith registration
and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
The Panel additionally finds bad faith registration and use under Policy ¶ 4(a)(iii) inasmuch as Respondent has failed to make an active use, and has failed to demonstrate preparations to make an active use, of the <targetallday.com>, <targettoyland.com>, <targetonthespot.com>and <target4less.com> domain names. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Complainant satisfied 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 <etargetshopping.com>, <targetallday.com>, <targettoyland.com>, <targetonthespot.com>, <target4less.com> and <pamstarget.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 27, 2006.
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