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Generic Top Level Domain Name (gTLD) Decisions |
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 postmaster@porntarget.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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