DECISION

Target Brands, Inc. v. Hosting Provider Service

Claim Number:  FA0308000187396

PARTIES

Complainant is Target Brands, Inc., Minneapolis, MN (“Complainant”) represented by Jodi A. DeSchane, of Faegre & Benson LLP.  Respondent is Hosting Provider Service, Tocumen, Panama (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <targetpills.com>, registered with Go Daddy Software, Inc.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 18, 2003; the Forum received a hard copy of the Complaint on August 19, 2003.

On August 18, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <targetpills.com> 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 August 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 9, 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@targetpills.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 Forum transmitted to the parties a Notification of Respondent Default.

On September 19, 203, 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.

RELIEF SOUGHT

Complainant requests transfer of the domain name from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <targetpills.com> domain name is confusingly similar to Complainant’s registered TARGET mark.

2. Respondent does not have any rights or legitimate interests in the <targetpills.com> domain name.

3. Respondent registered and used the <targetpills.com> domain name in bad faith.

B.  Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant Target Brands, Inc., through its licensee Target Corporation, has operated a chain of TARGET retail discount department stores since 1962.  Currently, Complainant operates over 1,100 stores in 47 states.  In addition to offering traditional discount department store merchandise, Complainant’s stores also offer pharmacy services.  Complainant operates a shopping website at <target.com>.

Used in association with its retail department stores and related services, Complainant holds a registered service mark in TARGET, which was registered on the Principal Register of the United States Patent and Trademark Office on February 27, 1968 as Reg. No. 845,193.  Complainant also holds a service mark in the word TARGET with the “bullseye” design, registered as number 1,386,318 on March 11, 1986.

Respondent registered the <targetpills.com> domain name on August 22, 2002, and has used the domain name and associated website to sell prescription drugs online.  Sometime after May 21, 2003, Respondent deactivated the website at the <targetpills.com> domain name, although Complainant reports that it is still possible to access Respondent’s services through pages hosted at other domain names.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established its rights in the TARGET marks through registration and continuous use of the marks in commerce.  The <targetpills.com> domain name incorporates Complainant’s entire registered TARGET mark and adds the word “pills,” a term that is closely related to Complainant’s pharmacy operations.  Accordingly, the Panel finds the <targetpills.com> domain name to be confusingly similar to Complainant’s TARGET marks.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); 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); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has asserted, with supporting evidence, that Respondent has no rights or legitimate interests in respect of the disputed domain name.  In light of Respondent’s failure to respond to Complainant’s assertion, the Panel may presume Respondent has no such rights or interests in the domain name.  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 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).

Furthermore, Complainant’s evidence demonstrates that Respondent’s purpose in using the <targetpills.com> domain name has been to drive traffic to its online pharmacy website through infringing use of Complainant’s TARGET mark.  Because Internet users may erroneously believe that Respondent’s site is somehow affiliated with or operated by Complainant, such a use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c).  See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated).

While Respondent may have held itself out as TARGETPILLS.COM on its website at <targetpills.com>, there is no evidence that Respondent was actually or commonly known by the disputed domain name.  Both the fact that Respondent declined to respond to Complainant’s charge and the fact that Respondent’s operations suddenly ceased suggest that Respondent was not legitimately known as <targetpills.com>.  Moreover, given the strength and fame of Complainant’s TARGET mark, it would seem highly unlikely that Respondent could make a legitimate use of the <targetpills.com> domain name without infringing on Complainant’s rights.  See Yoga Works, Inc. v. Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not commonly known by the <shantiyogaworks.com> domain name, despite listing its name as “Shanti Yoga Works” in its WHOIS contact information, because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting, where Respondent’s WHOIS information identified Respondent as “Neiman-Marcus,” that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark”).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant asserts that Respondent’s use of the <targetpills.com> domain name to sell prescription drugs in competition with Complainant evidences bad faith as defined in Policy ¶ 4(b)(iii).  While the record does not make clear whether Complainant dispenses prescription drugs online, Complainant’s <target.com> website does offer some prescription services and information about Complainant’s pharmacies.  Thus, customers of Complainant’s, who seek information online from Complainant, may be misleadingly diverted to Respondent’s site.  Such use of a domain name to disrupt the business of a competitor demonstrates bad faith registration and use within the meaning of Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites).

Because of the great degree of fame built up in Complainant’s TARGET marks, the same circumstances which establish bad faith registration and use under Policy ¶ 4(b)(iii) apply with equal force to establish bad faith under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Policy ¶ 4(a)(iii) has been satisfied.

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 <targetpills.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 30, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/936.html