Target Brands, Inc. v. JK Internet Services
Claim Number: FA0410000349108
Complainant is Target Brands, Inc. (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh Street, Minneapolis, MN, 55402. Respondent is JK Internet Services (“Respondent”), PO Box 511, Bairnsdale, Victoria, 3875, Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <porntarget.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that she has 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 22, 2004; the National Arbitration Forum received a hard copy of the Complaint October 25, 2004.
On October 25, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the domain name <porntarget.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 October 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2004, 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2004, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <porntarget.com>, is confusingly similar to Complainant’s TARGET mark.
2. Respondent has no rights to or legitimate interests in the <porntarget.com> domain name.
3. Respondent registered and used the <porntarget.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Target Brands, Inc. is a wholly owned subsidiary of Target Corporation, and is responsible for the protection of brands it owns and licenses to Target Corporation and its various divisions. One such licensee, Target Stores, has operated a chain of TARGET retail discount department stores since 1962 and currently has more than 1,200 stores in 47 states.
Complainant holds numerous valid U.S. trademark registrations for the TARGET mark, including registration numbers 845,193 (issued Feb. 27, 1968 for “retail department store, retail grocery store, retail bakery, prescription compounding and dispensing, and restaurant and snack bar services”), 2,793,901 (issued Dec. 16, 2003 for “on-line retail store services featuring a wide variety of consumer goods”), and 2,755,538 (issued Aug. 26, 2003 for “on-line retail store services featuring a wide variety of consumer goods”). The latter two registrations relate to Complainant’s commercial website operated at the domain name <target.com>.
With regard to registration number 845,193, Complainant amended the registration on May 5, 1981 to change the previous drawing of the TARGET mark to its current state. Specifically, the drawing includes a red bull’s-eye followed by the word TARGET, which appears in all capital letters.
In addition to its U.S. trademark registrations, Complainant also owns numerous registrations or pending registrations for the TARGET mark worldwide, including Canada (e.g. 369,297), China (e.g. 3,470,247), European Union (e.g. 2,733,228), India (e.g. 1,244,670), Mexico (e.g. 555,896), Norway (e.g. 200,406,127), Singapore (e.g. T03/05909), and South Africa (e.g. 2003/07999).
Respondent registered the disputed domain name <porntarget.com> November 30, 2002. Respondent uses the domain name to connect users to an adult search engine website. A printout of Respondent’s website on June 26, 2003 includes the heading: “Porn Target.” A red bull’s-eye separates the words “Porn” and “Target.” The website also contains a variety of explicit and obscene link titles.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 registration of a mark with a legitimate governmental authority is sufficient under the Policy to allow a rebuttable presumption of rights in the mark. Complainant owns numerous valid registrations of the TARGET mark with legitimate governmental authorities throughout the world. Therefore, Complainant has established a presumption of rights in the TARGET mark. Respondent’s failure to respond allows the presumption to stand uncontested. Therefore, Complainant has established rights in the TARGET mark pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).
Some panels have found that the determination of whether a domain name is confusingly similar to a mark is accomplished by simply comparing the textual elements of the domain name and mark. See Sportsman's Guide, Inc. v. Zuccarini, D2001-0617 (WIPO July 19, 2001) (“The Panel emphasizes that a determination of confusingly similarity under the relevant Policy is based solely on a comparison of the disputed domain name and Complainant's mark(s).”); see also Certified Fin. Planner Bd. of Standards, Inc. v. Career Pro., Inc., FA 97354 (Nat. Arb. Forum July 12, 2001) (citing federal court decision, Northern Light Tech., Inc. v. Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar. 31, 2000), for the proposition that in determining confusing similarity, panels should simply compare the mark with a domain name); see also Lapponia Jewelry Oy v. Rautelin Oy, D2000-1728 (WIPO Jan. 22, 2001) (“[T]he determination of whether identity or confusing similarity exists has to be drawn solely on the basis of an objective comparison of the domain names at issue and the trademark.”).
Other panels have taken a much broader approach towards paragraph 4(a)(i) of the Policy by examining not only the textual differences between domain names and marks, but also the uses associated with each. See Zingerle Metal SrL v. Int’l E-Z UP, Inc., D2001-1283 (WIPO Dec. 21, 2001) (“[T]he Panel notes that the determination of confusing similarity is a factual one [that] must be satisfied by the Panelist making a side-by-side comparison of the Trade Mark and the Domain Name, taking into account the degree of aural, visual, or conceptual similarity between the two, the similarity of the goods and services for which they are used and the inherent or acquired distinctiveness of the Trade Mark, as well as issues relevant to language.”); see also Educ. Testing Serv. v. TOEFL USA, D2002-0380 (WIPO July 11, 2002) (stating that the “determination of confusing similarity need not be conducted in a vacuum” and examining the attached website for interpretation of the intended meaning of the terms included in the disputed domain name).
In the instant case, the domain name <porntarget.com> includes Complainant’s TARGET mark in its entirety. The difference between the domain name and mark is the addition of the term “porn” to the front-end of Complainant’s mark. Previous panels have found that domain names are confusingly similar to third-party marks where the domain name incorporates a mark and merely adds the term “porn.” See Mattel, Inc. v. Domainsforsalenow@hotmail.com, FA 187609 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has merely added the descriptive word 'porn' to Complainant's registered BARBIE mark, and the addition of this word does not create a notable distinction between Complainant's mark and the domain name currently in dispute.”); see also Am. Online, Inc. v. GSD Pty. Ltd., FA 169083 (Nat. Arb. Forum Sept. 2, 2003) (finding that the domain name <icqporn.com> was confusingly similar to Complainant's ICQ mark under Policy ¶ 4(a)(i)); see also Vivendi Universal Games v. Exodus Hosting, FA 245969, (Nat. Arb. Forum Apr. 27, 2004) (finding the disputed domain name <blizzardporn.com> confusingly similar to Complainant’s BLIZZARD mark); see also V&S Vin & Sprit Aktiebolag v. Almgreen.com, FA 97853 (Nat. Arb. Forum July 31, 2001) (“[T]he <absolutporn.com> domain name is confusingly similar to Complainant’s ABSOULT mark, as it contains Complainant’s famous registered mark in its entirety combined with a generic word: ‘porn.’”).
Conversely, in Trump v. olegevtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001), a panel found that the domain name <porntrumps.com> was not confusingly similar to the complainant’s TRUMP mark. The panel reasoned that the word “trump” was a common word open to a variety of meanings and that respondent was not using the word as a trademark, and thus did “not infringe Complainant’s rights in its service mark.” The panel also noted that complainant did not have the “exclusive right to use every form of the word ‘trump.’” At first blush, the instant case might appear to be similar to the Trump case. However, Respondent has gone further to establish a confusing nexus between the domain name <porntarget.com> and Complainant’s TARGET mark. For example, at the top of the attached website, Respondent has included a nearly identical reproduction of Complainant’s red bull’s-eye drawing. The bull’s-eye is positioned directly to the left of Complainant’s TARGET mark, which Respondent has typed in all capital letters. This is an attempt at replicating Complainant’s registration number 845,193. Therefore, the Panel concludes that the domain name is confusingly similar to Complainant’s mark.
Further, other panels have found Complainant’s TARGET mark to be well known and famous, which makes the confusion between the domain name and mark even greater. See Target Brands, Inc. v. Carrington, FA 161276 (Nat. Arb. Forum July 16, 2003) (alluding to the “well-known nature of Complainant’s TARGET mark); see also Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003) (alluding to the “strength and fame of Complainant’s TARGET mark”).
Therefore, Complainant established Policy ¶ 4(a)(i).
The Panel has fulfilled its duty pursuant to UDRP Rule 10(b) by ensuring that “each Party is given a fair opportunity to present its case.” Respondent has disregarded its opportunity to present its case. Therefore, the Panel may construe the lack of a response as an admission that Respondent lacks rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).
In addition, the Panel may accept all reasonable allegations advanced in the Complaint as true, unless clearly contradicted by the evidence. See Allergan Inc. v. MedBotox Inc., FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint. Under these circumstances it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence).
It is well
established as a general proposition that a domain name, which is identical or
confusingly similar to a third-party mark, that is used in connection with the
offering of pornographic material, is not being used in a bona fide
manner pursuant to paragraph 4(c)(i) of the Policy and it is not being used in
a legitimate noncommercial or fair manner pursuant to paragraph 4(c)(iii) of
the Policy. See Am.
Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic
material, which is not a bona fide offering of goods or services, nor a
legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶
4(c)(i) & (iii).”); see also Dipaolo
v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003)
(“Diversion to pornography is
not a bona fide offering of goods or services or a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”); see
also Yahoo! Inc. v. Zuccarini, FA
183997 (Nat. Arb. Forum Oct. 20, 2003) (“Respondent's
use of the disputed domain names to redirect Internet users to pornographic
websites, where the names were selected specifically for the purpose of trading
on the goodwill of Complainant's marks, cannot qualify as a bona fide offering
of goods or services or as a legitimate noncommercial or fair use of the names
under the Policy.”).
Moreover, Complainant asserted that Respondent is not commonly known by the domain name <porntarget.com> pursuant to paragraph 4(c)(ii) of the Policy. Respondent has not rebutted this with any evidence. Therefore, the Panel accepts Complainant’s reasonable assertion as true. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant established Policy ¶ 4(a)(ii).
Paragraph 4(b) of the Policy contains indicators of bad faith, but it is non-exclusive. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (the Policy “indicates that its listing of bad faith factors is without limitation”).
As stated above, Complainant’s TARGET mark is famous. A previous panel stated that, given the fame of Complainant’s mark, it could “be inferred that Respondent had knowledge of Complainant’s TARGET mark when it registered the disputed domain name.” Target Brands, Inc. v. Carrington, FA 161276 (Nat. Arb. Forum July 16, 2003). Registering a domain name that is identical or confusingly similar to a third-party mark, despite having knowledge of that third party’s rights in the mark prior to registration, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). In the instant case, Respondent’s knowledge of Complainant’s rights in the TARGET mark is even more starkly adduced. Respondent reproduced not only Complainant’s TARGET mark at the attached website, but also added Complainant’s distinctive red bull’s-eye, which is positioned in a manner as if to intentionally replicate registration number 845,193.
As a general proposition, registering a domain name that is identical to or confusingly similar to a third-party mark for the purpose of diverting Internet users to pornographic material is evidence of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. In the instant case, Respondent did just that. More than that, however, Respondent registered Complainant’s famous third-party mark and reproduced Complainant’s mark and drawing to a point of being indistinguishable from the original. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
Complainant established 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 <porntarget.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 14, 2004
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