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Generic Top Level Domain Name (gTLD) Decisions |
Target Brands, Inc. v. Dmitri Romanov
Claim Number: FA0304000156249
Complainant is
Target Brands, Inc., Minneapolis, MN, USA (“Complainant”) represented
by Ann Dunn Wessberg of Faegre & Benson LLP. Respondent is
Dmitri Romanov, Chelyabinsk, Russian
Federation (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetstore.biz> registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 29, 2003; the
Forum received a hard copy of the
Complaint on April 29, 2003.
On
April 29, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <targetstore.biz> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name
disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
April 30, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
May 20, 2003 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@targetstore.biz by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 28, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus
R. Atkinson, Jr., 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."
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 makes the following assertions:
1. Respondent’s <targetstore.biz>
domain name is confusingly similar to Complainant’s TARGET mark.
2. Respondent does not have any rights or
legitimate interests in the <targetstore.biz> domain name.
3. Respondent registered and used the <targetstore.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
provides evidence of two trademark registrations with the United States Patent
and Trademark Office (“USPTO”) for the
TARGET mark (Reg. No. 845,193 registered
on February 27, 1968 and Reg. No. 1,386,318 registered on March 11, 1986) in
relation to
retail department stores. Complainant operates an informational and
online shopping website at <target.com>.
Respondent
registered the <targetstore.biz> domain name on November 7, 2001.
Respondent is using the disputed domain name to divert Internet users to a
website that presents
a number of advertisements, including a link to a
pornographic website, <erosground.com>.
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 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.
Complainant has
established that it has rights in the TARGET mark through registration with the
USPTO and continuous use in commerce
since 1962. See The Men’s Wearhouse,
Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”).
Respondent’s <targetstore.biz>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name appropriates Complainant’s mark and adds
the generic term “store”
to the end of the mark. The addition of a generic term to a famous mark does
not significantly differentiate
the domain name from the mark under Policy ¶
4(a)(i), especially when the generic term directly relates to the mark holder’s
business.
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 Marriott Int’l v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain
name <marriott-hotel.com> is confusingly similar
to Complainant’s
MARRIOTT mark).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not submitted a Response to the Complainant’s allegations. Thus, the Panel may
accept all of the reasonable allegations
and inferences in the Complaint as
true. See 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”);
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).
Moreover,
because of Respondent’s failure to answer the allegations of the Complaint, the
Panel presumes that Respondent lacks any
rights to or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent has failed to
invoke any circumstance which
could demonstrate any rights or legitimate
interests in the domain name).
Respondent is
using the <targetstore.biz> domain name to redirect Internet
traffic to a portal website that features several advertisements, including a
link to a pornographic
website, <erosground.com>. Respondent’s use of the
disputed domain name is neither a bona fide offering of goods or services
with
regard to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use with
regard to Policy ¶ 4(c)(iii), because Respondent
is diverting Internet users to
its website for commercial gain. See
Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000)
(finding no legitimate use when Respondent was diverting consumers to its own
website by
using Complainant’s trademarks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored
by Respondent hardly seems legitimate”); see
also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on
another's well-known mark to provide a link to a pornographic
site is not a
legitimate or fair use).
Furthermore,
Respondent has presented no evidence and there is no indication in the record
that suggests Respondent is commonly known
by either TARGET STORE or <targetstore.biz>.
Thus, Respondent has failed to establish that it has rights to or legitimate
interests in the <targetstore.biz> domain name. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also
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").
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <targetstore.biz> domain name to divert Internet users
to a website that provides links to a pornographic website,
<erosground.com>. The use
of a domain name confusingly similar to a
registered trademark to redirect Internet traffic to a pornographic website is
itself evidence
of registration and use in bad faith pursuant to Policy ¶
4(a)(iii). See Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the
Respondent linked the domain name in question to websites displaying
banner
advertisements and pornographic material); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000)
(finding that “this association with a pornographic web site can itself
constitute bad faith”).
The Panel
presumes that Respondent is benefiting commercially from its diversion of
Internet users to the <targetstore.biz> website because the
website contains advertisements and pornographic content. This use indicates an
attempt to attract Internet users
to Respondent’s website for its commercial
gain by creating a likelihood of confusion with Complainant’s mark, which is
evidence
of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract
users to a website
sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site
to its own website for
commercial gain).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <targetstore.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 2, 2003
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