Target Brands, Inc. v. Mary Jarvis
Claim Number: FA2211002019991
Complainant is Target Brands, Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, US. Respondent is Mary Jarvis (“Respondent”), Mississippi, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tarqet.net>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on November 11, 2022; Forum received payment on November 11, 2022.
On November 11, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <tarqet.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 15, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2022 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@tarqet.net. Also on November 15, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the TARGET trademark and service mark established by its ownership and use of the United States registrations described below an extensive use of the mark in its retail department store business and on the Internet.
Complainant submits that it has substantial international reputation, currently serving customers through approximately 1,750 stores in the United States, with offices in a number of other countries around the world and a website at <www.target.com>. It is traded on the New York Stock Exchange under the ticker symbol TGT, and in its fiscal year 2021,reported revenues of over US$106 billion.
Complainant alleges that the disputed domain name is identical or confusingly similar to its TARGET trademark and service mark, submitting that it is a close copy of Complainant’s mark, merely substituting the letter “q” for the letter “g”, both of which letters have a tail that descends below the line of text in the lower-case form used by domain names.
Complainant argues that in decisions too numerous to mention, panels established under the Policy have held that that a minor misspelling of a complainant’s trademark creates a confusingly similar domain name. See, Navy Federal Credit Union v. Terry Senn, FA 1677923 (Forum June 30, 2016) (“The at-issue domain name [navyfedearl.org] contains an obvious misspelling of Complainant’s NAVY FEDERAL trademark less its space where the letter ‘a’ and ‘r’ are transposed.”).
In a situation very similar to that of the present case, the domain name at issue <tarqets.com> was held to be confusingly similar to the TARGET mark. See Target Brands, Inc. v. Patrice Zingaro, FA 1855507 (Forum Sep. 7 2019). The panel found that “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).”
Complainant adds that the addition of the <.net> generic Top-Level Domain extension does nothing to alleviate confusion between Complainant’s mark and the disputed domain name. See, e.g., Atelier Luxury Group, LLC v. ahmad Akram, sports ghar, FA 2000902 (Forum July 14, 2022) (“The gTLD extension <.net> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence that Respondent is commonly known by the disputed domain name or the term “tarqet”, that it operates a business or other organization under the name “tarqet”, or that it owns any trademark or service mark rights in the words TARQET or TARGET.
Complainant asserts that Respondent is neither affiliated with, nor authorized by Complainant to use the TARGET mark yet the disputed domain name gives the false impression that it is so affiliated and authorized.
Complainant refers to copies of emails allegedly sent by Respondent which are exhibited as evidence in an annex to the Complaint, and alleges that Respondent has used the disputed domain name in an attempt to illegally lure Complainant’s business partners into a fraudulent phishing scheme. Complainant submits that the exhibited email correspondence shows that Respondent sent emails impersonating actual named employees of Complainant, (“NS” and “VP” whose names are supplied but redacted by the Panel) and submits that it is suspected that Respondent hacked the email account one of Complainant’s suppliers and was able to obtain a legitimate email exchange relating to certain purchase orders, allowing Respondent to create confusion by requesting payments without authority for the purpose of phishing. Complainant submits that such fraudulent email activity (phishing) has categorically been held not to confer any rights or legitimate interests in a disputed domain name. See, Target Brands, Inc. v. Patrice Zingaro, FA 1855507 (Forum Sep. 7, 2019) (Respondent’s use found not to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) where Complainant provided a copy of “the emails sent by Respondent to Complainant’s customers seeking payment for fake invoices”).
Complainant further argues that the disputed domain name does not resolve any active website content, but only to a parking page, which Complainant submits is evidence that the Respondent has no rights or legitimate interests in the disputed domain name because “parked pages do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).” See Harry Winston, Inc. v. Sean Romaro / Searom Global Pty Ltd, FA 1608000 (Forum Apr. 17, 2015).
Complainant adds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, so its actions do not fall within Policy ¶4(c)(iii), arguing that the second level of the disputed domain name incorporates a typo-squatted version of the famous TARGET mark, which was used for the phishing attempt, and it does not resolve to any meaningful website content. Complainant therefore contends that such activity does not fit in to any accepted category of fair use such as news reporting, commentary, political speech, education, etc. Rather, based upon the popularity and global reputation of the TARGET mark, those who see the disputed domain name will immediately perceive it to refer to Complainant.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent intentionally targeted the TARGET mark without consent from Complainant.
Complainant adds that Respondent was on actual notice of Complainant’s rights in its globally famous TARGET mark as a result of Complainant’s extensive use of the mark which long predates the date on which Respondent acquired the <tarqet.net> disputed domain name.
Complainant furthermore contends that the disputed domain name consists of a typosquatted variation of the TARGET mark and Respondent can only have created the disputed domain name with knowledge of, and in violation of, Complainant’s trademark rights. See, Target Brands, Inc. v. Hosting Provider Services, FA 187396 (Forum Sep. 30, 2003) (“Because of the great degree of fame built up in Complainant’s TARGET marks”, the Panel found that “Respondent’s use of the <targetpills.com> domain name to sell prescription drugs in competition with Complainant evidences bad faith….”).
Complainant argues that Respondent’s activity in using the disputed domain name for the purposes of phishing demonstrate that its goal in registering and using the disputed domain name was to obtain commercial gain by creating confusion with Complainant’s TARGET mark, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See, Frigorífico Carrasco S.A. v. Torsten Hoover, WIPO Case D2019-2768) (“Respondent was using the disputed domain name to send email communications for phishing and other fraudulent purposes in an attempt to obtain confidential information and money from third parties, impersonating a representative of the Complainant. This is a classic phishing scheme and establishes bad faith use and registration”, citing Paragraph 4(b)(iv) of the Policy).
Complainant further contends that Respondent has no substantive content at the website affiliated with the disputed domain name, as is shown in a screen capture exhibited as evidence in an annex to the Complaint.
Complainant argues that such passive holding allows finding of registration and use in bad faith pursuant to the Policy, as panels have frequently held that, after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith”. Even if none of the representative examples of Policy ¶ 4(b) are directly implicated. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO D2000-0003 (stating that the Policy “recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior.”)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and operates a chain of retail department stores and uses the TARGET trademark and service mark in its business, for which it owns the following United States of America registrations:
· United States registered trademark TARGET, registration number 818,410, registered on the Principal Register November 8, 1966, for goods in United States class 51
· United States registered service mark TARGET (and design), registration number 845,615, registered on the Principal Register on March 5, 1968, for services in United States class 101;
· United States registered service mark TARGET (and design), registration number 845,193 registered on the Principal Register on February 27, 1968, for services in United States class 101;
· EUTM, TARGET, registration number 001771229 registered on March 21, 2007 for services in classes 35 and 42;
· EUTM, TARGET, registration number 002733228, registered on September 20, 2010 for goods and services in classes 25, 28 and 35.
Complainant has an established Internet presence and offers its goods and services on its website at <www.target.com>.
The disputed domain name was registered on October 28, 2022 and has been used to set up an email account which it has used to impersonate Complainant and its employees for the purposes of phishing by sending emails to Complainant’s customers requesting payments on accounts.
There is no information available about Respondent except that which is provided in the Complaint as amended, the Registrar’s WHOIS, and the information provided by the Registrar in Response to the Request by the Forum for details of the registration of the disputed domain name for the purpose of this proceeding. Respondent availed of our privacy service to conceal her identity on the published WHOIS and the Registrar has confirmed that she is the registrant of the disputed 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 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 has provided convincing, uncontested evidence that it has rights in the TARGET trademark and service mark established by the ownership of the portfolio of trademark and service mark registrations described above and its use of the mark to distinguish its products and services in its internationally known retail department store business.
The disputed domain name <tarqet.net> consists of Complainant TARGET mark in its entirety, albeit with a minor misspelling substituting the letter “q” for the letter ”g”.
As both of these letters have a tail that descends below the line in lower-case form, the word “target” and “tarqet” are almost indistinguishable.
Complainant’s TARGET mark is the dominant and only element within the disputed domain name, except for the gTLD <.net>. extension which in the circumstances of this particular registration would be considered by Internet users to be a necessary technical requirement for a domain name registration, and therefore does not prevent finding of confusing similarity.
This Panel finds therefore that the disputed domain name is confusingly similar to the TARGET trademark and service mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that:
· there is no evidence that Respondent is commonly known by the disputed domain name, or the term “tarqet”, that it operates a business or other organization under the name “tarqet”, or that it owns any trademark or service mark rights in the words TARQET or TARGET;
· Respondent is neither affiliated with, nor authorized by Complainant to use the TARGET mark yet the disputed domain name gives the false impression that it is so affiliated and authorized;
· copies of emails allegedly sent by Respondent which are exhibited as evidence in an annex to the Complaint show that Respondent has used the disputed domain name for a phishing effort seeking to illegally lure Complainants’ business partners into a fraudulent scheme;
· the exhibited email correspondence shows that Respondent sent emails impersonating actual employees of Complainant, as names have been names supplied but redacted by the Panel in this decision’
· it is suspected that Respondent hacked the email account one of Complainant’s suppliers and was able to obtain a legitimate email exchange relating to certain purchase orders, allowing Respondent to create confusion by requesting payments without authority for the purpose of phishing;
· the disputed domain name does not resolve any active website content, but only to a parking page, which does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii);
· neither is Respondent making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, so its actions do not fall within Policy ¶4(c)(iii);
· the second level of the disputed domain name incorporates a typo-squatted version of the famous TARGET mark; and
· Respondent has no plausible basis to claim otherwise – particularly in light of the fame of the TARGET mark and any claim of innocent use should be viewed with great suspicion.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the TARGET trademark and service mark which predate the registration and extensive use the mark, including on the Internet, resulting in the creation of a strong international reputation and goodwill.
The disputed domain name was only recently registered on October 28, 2022, and given the similarity of the disputed domain name and Complainant’s distinctive mark, and also considering the unlawful use to which the disputed domain name was put so soon after being registered, this Panel has no hesitation in finding that on the balance of probabilities the disputed domain name was chosen because it is a misspelling of Complainant’s TARGET mark and registered in bad faith, in an act of typosquatting, in circumstances where the registrant was actually where of Complainant’s name, and mark.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s goodwill and reputation.
The uncontested evidence adduced by Complainant shows that the disputed domain name has been used to create an email account from which fraudulent emails have been sent to at least one of Complainant’s customers, impersonating Complainant and two of its employees for the purposes of a phishing scheme. This Panel accepts Complainant’s submissions that on the balance of probabilities Respondent hacked into the customer’s account and intercepted an email thread to perpetrate this plan.
Such use of a domain name for the purposes of impersonating Complainant and its employees, and fraudulently purporting to confuse unsuspecting Internet users for the purposes of phishing constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
In making this decision, this Panel is fortified by finding that the disputed domain name was chosen and registered in an act of typosquatting.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <tarqet.net> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 10, 2022
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