DECISION

Target Brands, Inc. v. Ling Shun Shing

Claim Number:  FA0308000190509

PARTIES

Complainant is Target Brands, Inc., Minneapolis, MN, USA (“Complainant”) represented by Jodi A. DeSchane, of Faegre & Benson LLP.  Respondent is Ling Shun Shing, Shanghai, PR, China (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com (hereinafter “Dotregister.Com”).

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 22, 2003; the Forum received a hard copy of the Complaint on August 25, 2003.

On August 27, 2003, Dotregistrar.Com confirmed by e-mail to the Forum that the domain names <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com> are registered with Dotregistrar.Com and that Respondent is the current registrant of the names. Dotregistrar.Com has verified that Respondent is bound by the Dotregistrar.Com 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 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 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@tarrget.com,  postmaster@targetr.com,  postmaster@marshalfeilds.com and  postmaster@marsallfields.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 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.)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 that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com> domain names are confusingly similar to Complainant’s TARGET and MARSHALL FIELD’S marks.

2. Respondent does not have any rights or legitimate interests in the <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com> domain names.

3. Respondent registered and used the <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Target Brands, Inc., holds numerous registrations in the United States for the TARGET mark (e.g.U.S. Reg. No. 845,193, registered on February 27, 1968) and the MARSHALL FIELD’S mark (e.g. U.S. Reg. No. 1,273,988, registered on April 10, 1984).

Target Stores, a licensee of Complainant, has operated a chain of retail discount department stores under the TARGET mark since 1962. To date, over 1,100 stores operate under the TARGET mark in 47 states. A website reflecting the TARGET mark is also located at the <target.com> domain name.

Marshall Field’s, another licensee of Complainant, has for several years operated a chain of premier department stores under the MARSHALL FIELD’S mark. Currently, there are 64 department stores operating under the MARSHALL FIELD’S mark in eight of states. The mark is also reflected online at the <marshallfields.com> domain name.

Respondent, Ling Shun Shing, registered the <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com> domain names on October 11, 2002, September 25, 2002, September 17, 2002, and October 4, 2002, respectively, without license or authorization to use the TARGET or MARSHALL FIELD’S marks for any purpose. All of the disputed domain names redirect Internet users to a website at the <landing.domainsponsor.com> domain name. At this website, Internet users are subjected to a series of pop-up advertisements for a variety of goods and services. The company that holds the <domainsponsor.com> domain name operates a revenue program by which domain holders who redirect Internet users to the <domainsponsor.com> domain name are eligible for a referral fee up to 50% of all revenues generated from searches and pop-up advertisements.

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 rights in the TARGET and MARSHALL FIELD’S marks through registration of the marks with the U.S. Patent and Trademark Office, as well as through widespread use of the marks in commerce.

Respondent’s <tarrget.com> and <targetr.com> domain names are confusingly similar to Complainant’s TARGET mark. Both domain names merely add an additional “r” to the TARGET mark, either in the middle of the mark or at the end, and this simple misspelling of Complainant’s mark does not defeat a finding of confusing similarity under the Policy. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ).

Respondent’s <marshalfeilds.com> and <marsallfields.com> domain names are confusingly similar to Complainant’s MARSHALL FIELD’S mark. Again, Respondent has merely registered common misspellings of Complainant’s mark, by transposing the “i” and the “e” and then eliminating the letter “l” from the <marshalfeilds.com> domain name, and by eliminating the letter “h” from Complainant’s mark in the <marsallfields.com> domain name. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).

Accordingly, the Panel finds that the <tarrget.com> and <targetr.com> domain names are confusingly similar to Complainant’s TARGET mark, and that the <marshalfeilds.com> and <marsallfields.com> domain names are confusingly similar to Complainant’s MARSHALL FIELD’S mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using the disputed domain names to redirect Internet users to a commercial website that features pop-up advertisements. In light of the fact that this website also sponsors a referral fee program, it is presumed by the Panel that Respondent receives a fee for each misdirected Internet user who is attempting to reach Complainant’s websites. Such diversionary use of Complainant’s mark is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). Thus, neither of these Policy “safe harbors” can vest rights or legitimate interests in the disputed domain names with Respondent. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

There is no evidence in front of the Panel permitting the inference that Respondent has ever been “commonly known by” any misspelling of the TARGET or MARSHALL FIELD’S marks. The Panel therefore finds that Policy ¶4(c)(ii) does not apply to Respondent. See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>); 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").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Each of Respondent’s domain names are simple misspellings of Complainant’s TARGET or MARSHALL FIELD’S marks. Standing alone, none of these domain names would have any value, as they are only useful insofar as they take advantage of Internet users who mistype Complainant’s marks in a web browser when searching for Complainant online. As Respondent is using the disputed domain names to profit from misdirected Internet traffic through the use of  the <domainsponsor.com> referral program, the Panel finds that Respondent’s creation of a likelihood of confusion with Complainant’s marks evidences bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel thus finds that Respondent registered and used the <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is 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 <tarrget.com>, <targetr.com>, <marshalfeilds.com> and <marsallfields.com> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  October 7, 2003

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