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Generic Top Level Domain Name (gTLD) Decisions |
Target Brands, Inc. v. 4160894 Canada
Inc.
Claim Number: FA0401000227648
PARTIES
Complainant
is Target Brands, Inc. (“Complainant”)
represented by Jodi A. DeSchane, of Faegre & Benson LLP,
2200 Wells Fargo Center, 90 South 7th Street, Minneapolis, MN 55402. Respondent is 4160894 Canada Inc. (“Respondent”) represented by John Lee, of Fraser Milner Casgrain
LLP, 99 Bank Street, Suite
1420, Ottawa, ON, K1P 1H4, CANADA.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetshopping.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 16, 2004; the Forum received
a hard copy of the
Complaint on January 21, 2004.
On
January 16, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the Forum that the domain name <targetshopping.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 has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a
Directnic.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
January 26, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 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@targetshopping.com by
e-mail.
A
timely Response was received and determined to be complete on February 17, 2004.
Complainant
submitted a timely reply on February 23, 2004.
Respondent submitted a timely sur-reply on March 1, 2004.
On February 24, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Houston Putnam
Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. The
Target Stores division of Target Corporation (“Target”), a licensee of
Complainant, has since 1962 operated a chain of TARGET®
retail discount
department stores, now numbering more than 1,100 stores in 47 states.
2. Over
the years, Target, TARGET® stores, and Target’s other commercial undertakings
have developed a national reputation for quality,
and value. This well-deserved and hard-earned
reputation is reflected in the substantial and valuable body of goodwill
symbolized by the well-known
TARGET mark.
3. The
TARGET mark is a commercial icon that has for many years been extensively used
and advertised. As a result, the TARGET mark enjoys
an extremely high degree of
recognition with the public in the United States.
4.
In fact, in light of the distinctiveness of the mark, the duration and extent
of the use of the mark in connection with retail department
store sales
services, the duration and extent of advertising and publicity of the mark, and
the high degree of recognition of the
mark, the TARGET mark is a famous mark as
defined in 15 U.S.C. §1125(c).
5. Complainant
holds numerous valid United States registrations for the mark TARGET including
United States Trademark Registration No. 845,193, registered February 27, 1968,
and for the mark TARGET and the Bullseye
design, U.S. Trademark Registration
No. 1,386,318, both for use in connection with, among other things, retail department
store sales
services.
6. Complainant
is also the owner of U.S. Trademark Serial No. 76/418,297 for the mark TARGET
and U.S. Trademark Serial No. 76/418,296
for the mark TARGET and the Bullseye
Design both for use in connection with on-line retail store services featuring
a wide variety
of consumer goods, which have been in use in connection with the
on-line services since at least as early as 1998 and 1999 respectively.
7. Target
is active in electronic commerce, operating an informational and on-line
shopping site at <target.com>.
To connect with Target’s website at TARGET.COM, an Internet user types
“www.target.com.” If the user has more
sophisticated software, the user may simply type “target.com,” the domain name
associated with Target’s website.
8. As
a result of, among other things, Target’s continuous use and extensive
advertising promotion, including nationwide television campaigns,
the TARGET
mark is known, among other places, throughout the United States as identifying
Complainant’s exclusive licensee as a source
of quality retail services.
9. The
highly-distinctive TARGET mark is of great and incalculable value to
Complainant. Complainant closely
controls the use and reproduction of the TARGET mark to ensure that
all of Target Stores’ current and potential customers can rely upon the mark as
a symbol of high quality products
and services.
10. The
domain name <targetshopping.com> fully incorporates Complainant’s TARGET mark, and is nearly
identical to the name of Complainant’s exclusive licensee, Target Stores. Respondent’s domain name is otherwise
identical to Complainant’s TARGET mark except for the use of the generic word
“shopping.” The use of the suffix
“shopping” is an irrelevant distinction, which does not change the likelihood
of confusion. See Kabushiki Kaisha
Toshiba v. Distribution Purchasing & Logistics Corp., D2000-0464 (WIPO
July 27, 2000) (finding <toshibastore.com> confusingly similar to the
TOSHIBA mark); see also 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 Complainant
combined with a generic word or term).
11. Given
the nearly identical nature of <targetshopping.com> to TARGET®, the domain name is
confusingly similar to Complainant’s mark.
12. Upon
information and belief, Respondent has no trademark or intellectual property
rights in the domain name <targetshopping.com>. Respondent is not, and has never been, a
licensee of Complainant or its predecessors in interest. At the time Respondent registered the domain
name, the TARGET mark was sufficiently distinctive or famous to give
constructive notice
to Respondent that the registration of domain names at
issue would violate Complainant’s rights.
See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge
of commonly known mark
at time of registration); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith
registration and use where it is “inconceivable that Respondent could make
any
active use of the disputed domain names without creating a false impression of
association with Complainant”).
13. Upon
information and belief, Respondent is not commonly known as <targetshopping.com>. See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in the domain name when
Respondent is not known by the mark).
14. Upon
information and belief, Respondent is not using the domain name in connection
with the bona fide offering of goods and services. When an Internet user inputs the domain name <targetshopping.com>, the user
is immediately transferred to a website that features advertising and links to
a variety of shopping sites such as <gotoys.ca>,
<famousgolfcourses.com>, <transponderbypass.com> and <12voltshop.com> selling a variety of
goods and services including toys, among other products and services one might
expect to be sold at Target.
Misdirecting consumers through the use of Complainant’s mark does not
qualify as a bona fide offering of goods and services under Policy ¶
4(c)(i). See Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally
and misleadingly diverting users away from Complainant’s site to
a competing website); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet
traffic is not a
legitimate use of the domain name).
15. Respondent
is not making any legitimate noncommercial or fair use of the domain name <targetshopping.com>. See Alta Vista v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding that using the domain name to direct users to
other, unconnected websites does not constitute
a legitimate interest in the
domain name); see also 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).
16. Under
these circumstances, Respondent lacks any valid rights or legitimate interests
in the domain name.
17. Respondent
registered and used the domain name <targetshopping.com>
after the TARGET mark was already distinctive and famous. Complainant has not authorized or had
control over Respondent’s use of the domain name <targetshopping.com> or any activities associated with the
domain names.
18. Respondent
registered the domain name
<targetshopping.com> to divert Internet users to a website featuring
advertisements and links to websites offering goods and services in direct
competition
with Target’s goods and services.
Respondent is capitalizing on the confusing similarity between <targetshopping.com> and the
TARGET® mark to redirect users to its website. Such actions constitute bad faith. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384
(Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s site pass
users through to Respondent’s competing
business); see also Reuters Ltd. v.
Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
Respondent demonstrated bad faith where Respondent was aware of Complainant’s
famous
mark when registering the domain name as well as aware of the deception
and confusion that would inevitably follow if he used the
domain name).
19. In
light of these circumstances, Respondent has registered and used the domain
name <targetshopping.com> in
bad faith under Policy ¶ 4(b).
20. Respondent’s
bad faith registration and use of the domain name <targetshopping.com> meet the standards for transfer of the
domain name to Complainant under the Anticybersquatting Consumer Protection Act
of 1999, 15
U.S.C.A. §1125(d)(1)(A).
B.
Respondent
As is set out in more detail
below, it is Respondent’s submission that the disputed domain name, <targetshopping.com>,
is not confusingly similar to Complainant’s registered trademarks TARGET or
TARGET & Bullseye Design (collectively, the “Complainant’s
Trademarks”).
Further, Respondent submits that it is entitled to use the trade-name TARGET SHOPPING
and has a legitimate interest
in the Internet domain name <targetshopping.com>
and that the use and registration of this domain name has been fair use and
made in good faith.
Respondent is an Internet
website design, development and marketing business, operating as Kaplunk
<kaplunk.com>. Respondent
operates an electronic commerce order
processing service for on-line businesses.
This service is named TargetShopping.com, and is hosted at <targetshopping.com>.
There is a public website at this Internet address, which is simply a splash
page having links to the partners of the TargetShopping.com
service. There is
also a secure Internet portal hosted at <targetshopping.com> that
allows its partners to use the TargetShopping.com service and manage electronic
commerce orders. This order service was first
developed in 1999 by Trilogix
Electronic Systems Inc. (“Trilogix”) for its own on-line
store. In 2001, the TargetShopping.com service and related domain name was
transferred to Respondent, in order to continue
the order processing service
for Trilogix, and to also offer the TargetShopping.com service to others.
For reasons developed below,
Respondent submits that the Administrative Panel would be justified in denying
the remedy requested by
Complainant.
[a.] The
Disputed Domain Name is Not Confusingly Similar to Complainant’s
Trademarks. ICANN Rule 3(b)(ix)(1);
ICANN Policy ¶ 4(a)(i).
Complainant takes the
position that “the TARGET mark is a famous mark as defined in 15 U.S.C. §1125(c).” Complainant has
furnished copies of United States Trademark Registration No. 845,193 for the
trademark TARGET and United States Trademark
Registration No. 1,386,186 for the
trademark TARGET & BULLSEYE Design, used in association with inter alia retail
department store services.
Complainant also refers to
United States Trademark application no. 76/418,297 TARGET and Application No.
76/418,296 TARGET & BULLSEYE
Design used in association with on-line
services. The particulars of the on-line services have not been given, nor have
copies of
these documents been provided. It is respectfully submitted that,
given the absence of the particulars for on-line services, Complainant’s
claimed trademark rights for on-line services should be disregarded, being
vague and unsubstantiated.
15 U.S.C. §1125(c) provides that, when determining
whether a mark is distinctive and famous, a court may consider factors such as,
but not limited
to:
(a) the degree of inherent or acquired
distinctiveness of the mark;
(b) the duration and extent of use of
the mark in connection with the goods or services with which the mark is used;
(c) the duration and extent of
advertising and publicity of the mark;
(d) the geographical extent of the
trading area in which the mark is used;
(e) the channels of trade for the goods
or services with which the mark is used;
(f) the degree of recognition of the
mark in the trading areas and channels
of trade used by the marks’ owner and the
person against whom the injunction is sought;
(h) whether
the mark was registered under the Act of March 3, 1881, or the Act of February
20, 1905, or on the principal register.
Complainant, however, has not
furnished any evidence to support the claimed fame or notoriety associated with
its TARGET trademark.
There is no evidence to measure against the criteria set
out in 15 U.S.C. §1125(c)
and Complainant has not established that its TARGET trademark is famous, and
that under trademark law it is entitled to the
special protections against
dilution or the loss of distinctiveness of its TARGET trademark.
In particular, Complainant
has not provided evidence as to the specific goods and services that
Complainant’s TARGET trademark is
famous for. There is no evidence showing the
high degree of recognition associated with Complainant’s trademark. No third
party references
or citations regarding the fame of this mark, as one would
expect, have been furnished in support of this bare claim. Indeed, Complainant
has not indicated the number of unique hits that its claimed Internet website
<target.com> receives on a daily basis, or furnished
evidence showing the
use of its TARGET trademark on that website or even provided a “WHOis” record
indicating its ownership of that
Internet domain.
The term “target,” being an
ordinary dictionary word, is commonly used in trademarks and Internet domain
names. For example, in the
United States, Complainant’s Trademarks co-exist on
the United States Patent and Trademarks Register with the following trademark
registrations:
AUTOTARGET.COM
2,474,947 and AUTO TARGET 2,478,993 registered to Jill Nachimi in association
with inter alia computerized on-line ordering of motor vehicles, namely
automobiles.
TARGET SPORTS
2,634,526 registered to Target Sports, Inc. in association with Mail
order services and
on-line retail store
services featuring firearm parts and accessories. Respondent notes that
Complainant’s website at <target.com>
has section
dedicated to sports equipment.
These registrations co-exist
on the United States Patent and Trademarks Register with Complainant’s marks.
Clearly, Complainant does
not have the right to the exclusive use of the word
TARGET in association with on-line shopping.
Other marks incorporating the
word “target” are registered with the Canadian Intellectual Property Office,
including Target, Target
Convenience Food Stores, Target Food, Target
Electronics and Target Liquor.
There are multiple
co-existing trademark registrations, owned by different entities, for
trademarks comprised of the word TARGET and
in some cases a descriptive word.
Each of the registrations set out above are all associated with sales, whether
on-line or through
traditional “brick and mortar” stores.
Respondent respectfully
submits that on a preponderance of the evidence Complainant’s TARGET trademarks
are weakly distinctive and
entitled to only a narrow ambit of protection.
Complainant argues that
“[t]he use of the suffix ‘shopping’ is an irrelevant distinction, which does
not change the likelihood of
confusion.” In support, Complainant references
previous UDRP decisions Kabushiki Kaisha Toshiba v. Distribution
Purchasing and Logistics Corp., D2000-0464 (WIPO July 27, 2000) (finding
<toshibastore.com> confusingly similar with TOSHIBA mark) and Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (domain name in dispute contains the identical mark of
Complainant combined with a generic word or
term). The Policy and the Rules do
not provide that an Administrative Panel is bound by or required to follow
precedent. See Tata Sons Ltd. v. Solanki D2001-0974 (WIPO Sept.
25, 2001).
Given the weak
distinctiveness of the TARGET trademark as set out above, it is respectfully
submitted that the word “shopping” in
the domain name at issue is a very
relevant consideration in any determination of confusingly similar under Policy
¶ 4(a).
Respondent submits that the
word “shopping” readily differentiates the disputed domain name from
Complainant’s TARGET trademark. The
trademarks TARGET, TARGET FOODS STORES and
TARGET LIQUOR are not confusing in Canada, owing in part to the small
differences in the
respective marks. Further, the trademarks TARGETSPORTS and
TARGETSPORTS.COM co-exist on the United States Patent and Trademarks Register
with Complainant’s Trademarks, also indicating that small differences between
respective trademarks are sufficient to avoid confusion.
Further, Complainant
has not provided any evidence to show that its TARGET trademarks are famous,
and warrants the support of a broader
scope of protection in any assessment of
confusingly similar.
It is submitted that
Complainant’s TARGET trademarks and the dominant features of <targetshopping.com>,
namely TARGET SHOPPING, are visually distinct, different in sound, appearance,
and suggested idea. The phrase TARGET SHOPPING, characterized
by two descriptive words, suggests “purchasing
goals.” The word TARGET on its own, such as Complainant’s trademark, suggests
the idea of
“a mark to be hit.”
Further,
Respondent notes that Complainant’s assertions that any use of the Domain Name
by another party would likely mislead or deceive
Complainant’s customers,
without evidence, is not persuasive. See Capt‘n Snooze Mgmt. Pty. Ltd. v.
Domains 4 Sale, D2000-0488 (WIPO July 10, 2000).
For these reasons, Respondent
respectfully submits that the disputed domain name is not confusingly
similar to Complainant’s Trademarks. It is respectfully submitted that
Complainant has failed to meet the requirements
of Policy ¶ 4(a)(i) and
accordingly the Complaint against Respondent should be dismissed.
[b.] Respondent Has Rights and a
Legitimate Interest in the Disputed Domain
Name.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
The
Internet domain name <targetshopping.com>
was registered in 1999 by Derek Schumann, President of Trilogix Electronic
Systems, Inc. for use in association with electronic commerce
opportunities
associated with his business Trilogix. This Internet domain name was chosen as
a combination of two descriptive dictionary
words, being suggestive of
“purchasing goals.”
The in-house web development
team at Trilogix was unable to identify a satisfactory existing electronic
commerce program that would
manage online purchases and the related shipping,
payment and accounts. Trilogix therefore developed and reformed its own
proprietary
electronic commerce “shopping-basket” service which is now
TargetShopping.com. This service was created and enhanced by Trilogix
with the
ultimate aim of providing the service to third parties for sales and marketing
activities. The trade name TARGET SHOPPING
was registered to Trilogix on
November 13, 2001.
The Trilogix
TargetShopping.com service and Trilogix web development business was
subsequently spun off into its own legal
entity, being Respondent. Respondent is an Internet website design and
development company, doing business as Kaplunk. Kaplunk
is a registered
business name of Respondent. A Business License was issued on August 26, 2003
to Respondent.
Respondent Kaplunk provides
the TargetShopping.com electronic commerce service for retailers such as
<12voltshop.com>, <famousgolfcourses.com>,
<gotoys.ca> and
<transponderbypass.com>. Each of these businesses operate their own branded
websites. TargetShopping.com
provides the “checkout” service for consumers, and
the secure web-based interface at <targetshopping.com> for the
business to manage its electronic commerce orders, shipping and payment.
Kaplunk is a successful
ongoing concern, generating a large portion of its revenues from the
TargetShopping.com service. Since the
purpose is to enable businesses to easily
manage electronic commerce, the TargetShopping.com service is not directly
marketed to
individual
consumers.
In response to Complainant’s
allegations, Respondent denies that it had actual or constructive notice on the
basis that Complainant’s
TARGET trademark was sufficiently distinctive or
famous, that the registration of the Internet domain name <targetshopping.com>
would violate Complainant’s rights. As set out above, Complainant is not the
exclusive source of TARGET services for retail or wholesale
sales, in Canada or
for on-line sales in the United States.
Respondent is using the
Internet domain name <targetshopping.com> in association with the bona
fide performance of services. The Internet domain provides secure Internet
access to its clients to manage the purchases, shipping and
payment of orders
made on its clients’ Internet websites.
Respondent submits that
Complainant’s allegation that Respondent is misdirecting consumers, in
contravention of Policy ¶ 4(c)(i)
is unfounded. Respondent specifically denies that it is misdirecting consumers
through the use of Complainant’s mark. The
hyperlinks to websites displayed on
the splash screen and public website for <targetshopping.com> are
links to the TargetShopping.com client websites. Further, at the <targetshopping.com>
website, no goods are offered, advertised or performed as it is not a retail
sales website. Instead, <targetshopping.com> is an
order-processing service provider for businesses to manage sales and marketing
activities.
Respondent submits that its
use of the Internet domain name <targetshopping.com> is fair use,
made in good faith. As stated earlier, this domain name suggests the idea of
“purchasing goals,” which is of interest
to businesses seeking an electronic
commerce ordering and payment solution. The website and business hosted at the <targetshopping.com>
domain name relates to the management of sales and marketing activities for
on-line transactions. Respondent is not seeking to divert
customers seeking
Complainant’s trademark. Respondent and Trilogix have no knowledge of any
actual confusion of the Internet domain
name <targetshopping.com>
with Complainant.
Further, before any notice to
Respondent of the dispute, Respondent’s use of the Internet domain name <targetshopping.com>
corresponded to a registered trade-name (“Target Shopping” registered to the
previous owner Trilogix). Further Respondent submits
that through its bona
fide offering and performance of services to third parties, it has also
developed common law trademark rights in TargetShopping.com.
For these reasons, Respondent
respectfully submits that it has valid rights and a legitimate interest to the
Internet domain name
<targetshopping.com>. It is respectfully
submitted that Complainant has failed to meet the requirements of Policy ¶
4(a)(ii) and accordingly the Complaint
against Respondent should be dismissed.
[c.]
The Disputed Domain Has Been Registered in Good Faith with Fair Use. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶
4(a)(iii).
The Internet domain name <targetshopping.com>
was registered in 1999 by Derek Schumann, the principle of Trilogix and also of
Respondent Kaplunk. The domain name was registered
as the words “target” and
“shopping” are apt and descriptive of services that are directed towards
electronic commerce. There is
both a public website and secure client website
hosted at this Internet domain.
The public website of <targetshopping.com>
is used simply as a splash page having links to businesses that use the Target
Shopping e-commerce shopping order-processing service.
The logos shown for the
businesses 12VOLTSHOP.COM, GOTOYS.CA, TRASPONDERBYPASS.COM, SHOP12VOLTS.COM and
FAMOUSGOLFCOURSES.COM all
provide hyperlinks to those e-commerce websites, each
of which use the TargetShopping.com e-commerce management service. Recently,
the business at GO TOYS located at <gotoys.ca> has been closed. This link
has been removed from the <targetshopping.com> website. The splash
page describes these as “Partner Sites.”
The secure website at <targetshopping.com>
provides an administration interface for clients of Target Shopping. The
administration interface allows clients to manage orders,
product returns, set
dollar exchange rates, calculate shipping costs, invoice, and manage payments.
In support of these
submissions, Respondent submitted further exhibits to verify its assertions.
Further, Respondent states
that:
(i) Respondent has not registered the
domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark
in a corresponding domain name, and that Respondent has not
engaged in a pattern of such conduct; or
(ii) Respondent has not registered
the domain name primarily for the purpose of disrupting the business of a
competitor; and
(iii) by using the domain name, Respondent
has not intentionally attempted to attract, for commercial gain, Internet users
to Respondent’s
website or other on-line location, by creating a likelihood of
confusion with Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s website or location or of a product or service
on Respondent’s website or location.
Respondent has registered and
is using the Internet domain name <targetshopping.com> in good
faith with fair use. It is respectfully submitted that Complainant has
failed to meet the requirements of Policy ¶ 4(a)(iii) and accordingly the
Complaint
against Respondent should be dismissed.
Respondent further submits
that Complainant is required to substantiate its Complaint in order to
sufficiently make out a case. If
in the light of the statements and documents
presented doubts remain, the Complaint cannot be allowed. See Formula One
Licensing BV v. Formula One Internet, D2000-0193 (WIPO May 28,
2000). For the reasons set out above, it is respectfully submitted that the
Panel would be justified in refusing
the Complaint under Policy ¶¶¶ 4(a)(i),
(ii) and/or (iii).
C.
Additional Submissions
Both parties
submitted additional material about the extent, time and scope of various
trademark registrations in the United States
and Canada.
FINDINGS
The Panel
finds:
(1)
the domain
name registered by Respondent is identical or confusingly similar to a trademark
or service mark in which Complainant has
rights;
(2)
Respondent
has rights or legitimate interests in respect of the domain name; and
(3)
the domain
name was not registered and used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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 is a
wholly owned subsidiary of Target Corporation and is responsible for protection
of brands it owns and licenses to
Target Corporation and its various
divisions. Complainant holds several
registrations with the U.S. Patent and Trademark Office (“USPTO”) for the
TARGET mark, including Reg. Nos.
845,193 and 1,386,318 (registered on February
27, 1968 and March 11, 1986, respectively).
The first registration, Reg. No. 845,193, is registered under the name
Target Stores Inc. and was ultimately assigned to Complainant
on January 28,
2000. The second registration Reg. No.
1,386,318 is registered under the name Dayton-Hudson Corp. d/b/a Target and was
also ultimately assigned
to Complainant on January 28, 2000. Complainant’s copy
of the 1,386,318 registration documentation shows that the TARGET mark has
been
used in commerce since 1965.
Complainant has established rights in the TARGET mark. See Men’s Wearhouse, Inc. v. 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.”); see also Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that 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).
Furthermore, the
<targetshopping.com> domain
name is confusingly similar to the TARGET mark because the domain name fully
incorporates the mark and merely adds the descriptive
term “shopping” and the
generic top-level domain “.com” to the mark.
See Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names
<caterpillarparts.com> and <caterpillarspares.com>
were confusingly
similar to the registered trademarks CATERPILLAR and CATERPILLAR DESIGN because
“[t]he idea suggested by the disputed
domain names and the registered trademarks
is that the goods or services offered in association with [the] domain names
are manufactured
by or sold by Complainant or one of Complainants [sic]
approved distributors. The disputed trademarks contain one distinct component,
the word CATERPILLAR”); see also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain
(gTLD)
“.com” after the name POMELLATO is not relevant); see also 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 Complainant
combined with a generic word or
term).
Respondent “operates an electronic commerce order
processing service for on-line businesses” under the name TargetShopping.com
and
is hosted at the <targetshopping.com> domain
name. Moreover, the website at the <targetshopping.com>
domain name provides links to the partners of TargetShopping.com and
provides a secure Internet portal that allows its partners to
use the domain
name to manage electronic commerce orders.
Respondent has rights and legitimate interests in the <targetshopping.com>
domain name because it is using the domain name to make a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i). See First Am. Funds, Inc. v. Ult.Search,
Inc., D2000-1840 (WIPO
Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal
website is a legitimate interest); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum
June 2, 2003) (finding that Respondent’s operation of a bona fide
business of online prop rentals for over two years was evidence that Respondent
had rights or legitimate interests in the disputed
domain name); see also
Canned Foods Inc. v. Ult.Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13,
2001) (stating that “Respondent is using the domain <groceryoutlet.com>
for a website
that links to online resources for groceries and similar goods.
The domain is therefore being used to describe the content of the
site,” as
evidence that Respondent was making a bona fide offering of goods or
services with the disputed domain name).
Respondent’s predecessor registered “target shopping” on November 13,
2001 with the Ministry of Ontario and this pre-dates the June
7, 2002 filing
date for Complainant’s on-line store trademark registrations with the United
States Patent and Trademark Office.
Given some of the omitted information (by both sides), this Panel
assumes the filing was transferred to Respondent when it was established. Respondent is also known as Target
Shopping.com on its credit card merchant accounts. This appears to satisfy Policy
¶ 4(c)(ii).
The
Panel feels compelled to comment on Complainant’s delay in bringing this
action. The <targetshopping.com> domain name was registered in 1999. Complainant waited roughly four years to
bring this proceeding. This is
troubling. A party does not normally
slumber on its rights and the Panel does not know why Complainant waited so
long to protect its rights. In the
meantime, Respondent established its business (see Policy ¶ 4(c)(i)). There was no showing Complainant contacted
Respondent before Respondent spent substantial effort in designing and implementing
an
e-commerce portal. While the <targetshopping.com> domain name public website was merely
serving as a splash page to redirect traffic to five other websites, there was
a significant
private e-commerce website located at this domain name.
While
Complainant’s mark is certainly famous to this Panelist, that is not a factor
to be specifically considered under the ICANN
procedures.
Respondent did
not register or use the <targetshopping.com>
domain name in bad faith because it uses the domain name to make a bona
fide offering of goods or services and thus has rights and legitimate
interests in the domain name. See
MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat.
Arb. Forum May 9, 2003) (Panelist David Sorkin, dissenting) (finding that
Respondent’s reasonable belief in its
legitimate right to register the disputed
domain name precluded a finding of bad faith registration); see also Mule Lighting, Inc. v. CPA, FA 95558
(Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an
active website that has been in use for two
years and where there was no intent
to cause confusion with Complainant’s website and business).
Respondent
did not register or use the <targetshopping.com>
domain name in order to sell it for profit, to compete with Complainant, or
to prevent Complainant from reflecting its mark in a corresponding
domain
name. See Societe des Produits
Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12,
2001) (finding that where Respondent
has not attempted to sell domain name for profit, has not engaged in a
pattern of conduct depriving others of the ability to obtain
domain names
corresponding to their trademarks, is not a competitor of Complaint seeking to
disrupt Complainant's business, and is
not using the domain name to divert
Internet users for commercial gain, lack of bona fide use on its own is
insufficient to establish bad faith).
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: Friday, March 8, 2004
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