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Generic Top Level Domain Name (gTLD) Decisions |
Target Brands, Inc. v. Eastwind Group
Claim Number: FA0405000267475
PARTIES
Complainant is Target Brands, Inc. (“Complainant”), represented by Jodi A. DeSchane, of Faegre & Benson
LLP, 2200 Wells Fargo
Center, 90 South Seventh St., Minneapolis, MN 55402. Respondent is Eastwind
Group (“Respondent”), represented by Ari
Goldberger of ESQwire.com, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <target.org>, registered with 123 Easy Domain Names d/b/a Signature Domains, Inc.
PANEL
The undersigned Panelist Steven L.
Schwartz 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on April 30, 2004; the
Forum received
a hard copy of the Complaint on May 3, 2004.
On May 6, 2004, 123 Easy Domain Names
d/b/a Signature Domains, Inc. confirmed by e-mail to the Forum that the domain
name <target.org> is
registered with 123 Easy Domain Names d/b/a Signature Domains, Inc. and that
Respondent is the current registrant of the name. 123 Easy Domain Names d/b/a Signature Domains, Inc. has verified
that Respondent is bound by the 123 Easy Domain Names d/b/a Signature
Domains,
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 May 25, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of June 14, 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@target.org
by e-mail.
A
timely Response was received and determined to be complete on June 14, 2004.
A timely Additional Submission was
received and determined to be complete on June 21, 2004 from Complainant.
On June 24, 2004,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Steven L. Schwartz as Panelist.
An Additional
Submission in reply to Complainant’s Additional Submission was received by
email on June 29, 2004. The Forum
determined that this additional submission was not in compliance with
Supplemental Rule #7. With the
exception of additional case citations, no significant new material was
included in Respondent’s additional submission. The
Panel finds that
Complainant will not be prejudiced by accepting this Additional
Submission. Therefore, Respondent’s
Additional Submission is accepted into the record.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant makes the
following contentions:
Background of Claim
1. Complainant
Target Brands, Inc. 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.
2.
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.
3. Over the years, Target, TARGET® stores,
and Target’s other commercial undertakings have developed a national reputation
for quality,
and value. Target asserts
that this is a well-deserved and hard-earned reputation and is reflected in a
substantial and valuable body of goodwill
symbolized by the well-known TARGET
mark (or “mark”).
4. The TARGET mark is represented to be a
commercial icon that has for many years been extensively used and advertised.
As a result,
TARGET asserts that its mark enjoys an extremely high degree of
recognition with the public in the United States and 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. Target is active in electronic
commerce, operating an informational and on-line shopping site at www.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.
7. Complainant asserts that 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.
8. Finally, it is claimed that TARGET
mark is the highly distinctive and 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.
Similarity of the Domain
Name to Complainant’s Trademarks
9. Complainant asserts that the domain
name <target.org> is
identical to Complainant’s TARGET mark and merely adds a top-level indicator
".org." It has been
established that addition of a top-level indicator such as ".com" or
".org" does not defeat a claim
of confusing similarity. See, Clairol
Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name
<clairol.tv> is identical to Complainant’s CLAIROL marks); 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).
10. Given the identical nature of <target.org> to TARGET®, the domain
name is identical to Complainant’s mark.
Absence of Trademark
Rights in Respondent
11. Complainant believes that Respondent
has no trademark or intellectual property rights in the domain name <target.org>. 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. Samsonite Corp. v. Colony Holding,
FA 94313 (NAF April 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of commonly known mark at time of
registration); Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
bad faith registration and use where it is “inconceivable that the Respondent
could
make any active use of the disputed domain names without creating a false
impression of association with the Complainant”).
12. Complainant also believes that
Respondent is not commonly known as <target.org>. Gallup, Inc. v. Amish Country Store,
FA 96209 (NAF Jan. 23, 2001) (finding that Respondent does not have rights in
the domain name when Respondent is not known by the
mark).
13. Complainant contacted Respondent by
letter dated August 10, 2001 after learning of Respondent’s registration of the
<target.org> domain
name. Because, to the best of
Complainant’s knowledge, Respondent had not begun using the domain name,
Complainant took no further action
at that time.
14. However, Complainant continued to
monitor the use of the <target.org>
domain name. Complainant believes that between April 28, 2003 and December 15,
2003 Respondent had used the <target.org>
domain name to direct users to a
website at xxxweb.com, featuring
sexually explicit images. It also
believes that after Respondent stopped directing users to xxxweb.com, it began using the <target.org> domain name to direct users to a search engine that
offers links to shopping sites, selling products one might expect to be sold
at
TARGET® Stores or at target.com.
15. Complainant again contacted
Respondent by letter dated February 9, 2004 advising Respondent that its use of
TARGET in association
with “adult” content is inconsistent with the image and
goodwill that have been built in Complainant’s TARGET mark and is likely
to
tarnish Complainant’s mark. In
addition, Respondent was informed that its use of TARGET to link users to
shopping sites is likely to confuse or mislead consumers. Complainant requested that Respondent cease
and desist from using the <target.org>
domain name. According to Complainant, Respondent did not respond,
therefore, it filed this action.
16. Respondent is not using the domain
name in connection with the bona fide offering of goods and services. Respondent did not initially use the domain
name at all after registration in 1991.
Upon information and belief, when Respondent began using the <target.org> domain name it was in
association with posting pornographic content.
MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that it is not a bona fide offering of goods or services to use a
domain name for commercial
gain by attracting Internet users to sites offering
sexually explicit and pornographic material, where such use is calculated to
mislead consumers and tarnish the Complainant’s mark). Currently, when an Internet user inputs
the <target.org> domain name, the user is immediately transferred to
a search engine. Such use, it is
contended, is also not a bona fide offering of goods and services.
17. Respondent is not making any
legitimate noncommercial or fair use of the <target.org> domain name.
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). In particular, Respondent’s current use of
the domain name to direct users to a website that offers a search engine to
link users
to a variety of websites, including shopping sites offering the same
type of goods available at TARGET® stores and available on-line
at <target.com> does not establish
rights or legitimate interests. 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); Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA
96577 (NAF 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).
18. Complainant maintains that under
these circumstances, Respondent lacks any valid rights or legitimate interests
in the domain name.
Bad
Faith Registration and Use of Domain Name
19. Complainant asserts that at the time
Respondent registered the <target.org>
domain name, the TARGET mark was sufficiently distinctive or famous to give
constructive notice to Respondent that the registration
of <target.org>
would violate Complainant’s
rights. Moreover, before Respondent
began use of the <target.org>
domain name, it had actual knowledge that such use could violate Complainant’s
valuable trademark rights. Samsonite Corp. v. Colony Holding, FA 94313
(NAF April 17, 2000) (evidence of bad faith includes actual or constructive
knowledge of commonly known mark at time of
registration); Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith
registration and use where it is “inconceivable that the respondent could
make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”).
20. Complainant
has not authorized or had control over Respondent’s use of the <target.org> domain name or any
activities associated with the domain name.
21. Respondent’s
use of the <target.org>
domain
name to display pornographic material is evidence of bad faith. Hewlett-Packard Company v. Russx Casting Company, FA 99709 (NAF October 22, 2001); MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that
association of confusingly similar domain name with pornographic web site can
constitute
bad faith); 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”).
Respondent’s use of a domain name that is identical to the TARGET mark
is also likely to dilute said mark by associating the TARGET
mark with pornographic
images that tarnish the family-oriented goodwill associated with the TARGET
mark.
22. Complainant claims that Respondent
is currently using the <target.org>
domain name to divert Internet traffic to a website that offers a search engine and links to other websites featuring
goods and services in direct competition with Complainant’s goods
and
services. Respondent is capitalizing on
the confusing similarity between <target.org> and the TARGET® mark to redirect users to a website
unconnected to Complainant. Such
actions also constitute bad faith. EthnicGrocer.com,
Inc. v. Latingrocer.com, FA 94384 (NAF July 7, 2000) (finding bad faith
where Respondent’s site pass users through to Respondent’s competing
business); 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). Furthermore, an Internet user who
inadvertently arrives at Respondent’s site by typing <target.org> into
a web browser instead of <target.com>
might utilize the services at Respondent’s site instead of continuing a
search for Complainant’s goods and services, or assume that
Complainant
endorses or sponsors the <target.org>
site.
23. Respondent’s use of a domain name
that is nearly identical to Complainant’s mark is likely to cause confusion or
cause the public
to mistakenly believe that Complainant in some way authorized,
sponsored, approved or endorsed Respondent’s activities related to
the domain
name or that Complainant is in some way affiliated with Respondent’s
activities.
24. In light of these circumstances,
Respondent has registered and used the <target.org> domain name in bad faith under ICANN Policy ¶ 4(b).
25. Respondent’s bad faith registration
and use of the <target.org>
domain name meet the standards for transfer of the domain names to Complainant
under the Anticybersquatting Consumer Protection Act
of 1999, 15 U.S.C.A.
§ 1125(d)(1)(A).
B. Respondent makes the following
contentions:
Background of Response
1. The
disputed domain is composed solely of the common word “target,” which is a
common word in the English dictionary meaning, among
other things, “an object,
such as a padded disk with a marked surface, that is shot at to test accuracy
in rifle or archery practice.”
2. Respondent registered the disputed
domain because it was available for anyone to register and incorporated a
common word.
3. The common word “target” is subject to
substantial third party use unrelated to Complainant. An advanced Google.com search for the term “target” excluding <target.org> and “store,” to eliminate references to Complainant,
yielded 14.5 million results. The word
“target” relates to the sport of archery, which involves a bow and arrow and a
“target.” The word “target” is also
used in the English language to refer to a desired goal or objective.
4. Respondent uses the disputed domain
in connection with an affiliate advertising program with Overture.com, Inc.,
which posts links
related to the word “target.” Links appear at the website located at <target.org>, which relate to target practice, hunting, archery, and
other sports equipment. The links on
Respondent’s website are auto-generated by Overture.com, using a sophisticated
system that provides links relevant to
the dictionary meaning of the word
target. These links include goal, goal
setting, personal goal, career goal, hinting equipment, hunting gear and other
sports-related and goal
related links which are prominently displayed on
Respondent’s website. Respondent
maintains that such use of a website to provide generic links can support the
Respondent’s legitimate interest. Williams,
Babbitt & Weisman, Inc. v. Ultimate Search, No. 98813 (NAF Oct. 8,
2001)
5. Respondent contends that Complainant
has mislead the Panel by alleging in paragraphs 22-24 of the Complaint that
“Respondent began
using the domain name target.org in association with posting
pornographic content” at a website known as xxxweb.com. In actuality, this domain name has always
been used in connection with advertising links. The disputed domain never
directly led to
an adult web page. The
web page has contained one link, among dozens of other links and
advertisements, denoted “Adult Content Over 18 Only,” which, if clicked, led to
a warning page promoting
a third-party website located at xxxweb.com. Respondent claims that this was only a link
and can be verified by the website http://archive.org which contains an
historic archive
of content posted at websites. At some point in late 2003 early 2004, the adult link was
removed. Prior to April 2003, <target.org> was pointed to general advertising site with no adult link
as evidenced by archived web page of <target.org> for May
25, 2002. There was no adult link at or
around the time the Complaint was initiated, having been removed several months
prior.
6. Respondent maintains that it did not
register the disputed domain for the purpose of selling it to Complainant. Respondent has never offered to sell any
domain name.
7. Respondent also maintains that it
did not register the disputed domain with the intent to disrupt Complainant’s
business or to confuse
consumers seeking to find Complainant’s website. Respondent did not register the disputed
domain to prevent Complainant from owning a domain name incorporating its
alleged trademark. Respondent has never
registered a domain name to prevent any trademark owner from registering a domain
name incorporating a trademark.
8. Respondent
asserts that under the ICANN Policy, Complainant can prevail on its claim to
obtain the rights to the disputed domain,
only if it is able to demonstrate
three things:
1.
That the disputed domain name is identical or
confusingly similar to its trademark; and
2.
That respondent has no rights or legitimate
interest in the domain name; and
3.
The domain name was registered and is being used
in bad faith.
(Policy,
¶¶ 4(a)(i)-(iii).) Complainant bears
the burden of proof as to each element of its claim. (Policy ¶ 4(a).)
Respondent maintains that Complainant cannot and has not met this
burden.
And Absence of Trademark
Rights in Respondent
9. Respondent does not dispute that
disputed domain and Complainant’s common word trademark are identical.
10. Respondent contends, however, that
this issue need not be reviewed because Complainant has failed to meet its
burden of proving that
Respondent lacks a legitimate interest in the disputed
domain, or that it registered or has used it in bad faith and, therefore,
the
Complaint must fail regardless of the likeness of the disputed domain and
Complainant’s trademark.
Respondent
Has Rights and a Legitimate Interest In The Domain Name
11. Respondent asserts that Complainant
failed to prove the second element--that Respondent has no rights or legitimate
interest in the
name. Respondent
points to Paragraph 4(c) of the Policy where three circumstances are listed
that can demonstrate a registrant’s rights
or legitimate interest in the
disputed domain name:
(a)
Before any notice to you of the dispute, your
use of, or demonstrable preparations to use, the domain name or a name
corresponding
to the domain name in connection with a bona fide offering of
goods or services;
(b)
You (as an individual, business or other
organization) have been commonly known by the domain name, even if you have
acquired no trademark
or service mark rights;
(c)
You are making a legitimate noncommercial or fair
use of the domain name, without intent for commercial gain to misleadingly
divert
consumers or to tarnish the trademark or service mark.
(Policy
¶ 4(c)(i) - (iii).)
Respondent contends that because TARGET
is a common word, and appears on over 7.5 million third party web pages wholly
unrelated to
Complainant, and is not exclusively used by Complainant,
Respondent, ipso facto, has rights and a legitimate interest in the
disputed domain. Energy Source Inc.
v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001)
(YOURENERGYSOURCE.COM) (finding that Respondent has rights and legitimate
interests in
the domain name where “[r]espondent has persuasively shown that
the domain name is comprised of generic and/or common words, and,
in any event,
is not exclusively associated with Complainant’s business”)
12. Respondent states that prior to the
initiation of this dispute, Respondent has used the disputed domain in
connection with Internet
advertising that specifically relates to the literal
meaning of the word “target,” which is defined as “an object, such as a padded
disk with a marked surface, that is shot at to test accuracy in rife or archery
practice.” Examples of the relevant advertisements
on Respondent’s website are
links related to hunting, fishing, outdoor recreation, and sporting goods. These relevant links appear presently, and
have appeared on Respondent’s website for well over a year prior to initiation
of this
dispute.
13.
Respondent maintains that the use of a common word domain
name in connection with third party advertising services related to the
descriptive meaning of the domain name constitutes use
in connection with a bona fide offering of goods or services, pursuant to
paragraph 4(c)(i). Sweeps
Vacuum & Repair Center, Inc. v. Nett Corp., No. D2001-0031 (WIPO Apr. 13, 2001) (pointing
sweeps.com to Overture.com (then known as Goto.com) links related to
sweepstakes established
legitimate interest).
No Bad Faith Registration Or Use Of Domain Name
14. Respondent asserts that no bad faith
registration and use can be demonstrated by Complainant and points to the ICANN
Policy that identifies
four circumstances that may constitute evidence of bad
faith registration and use:
(a) Circumstances indicating that you have registered
or you have acquired the domain name primarily for the purpose of selling,
renting,
or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to
a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to
the domain name; or
(b) You have 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, provided that you have engaged in a pattern of
such conduct; or
(c) You have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(d) By using the domain name, you have intentionally
attempted to attract, for commercial gain, Internet users to your website or
other
on-line location, by creating a likelihood of confusion with the
complainant's mark as to the source, sponsorship, affiliation, or
endorsement
of your website or location or of a product or service on your website or
location.
(Policy ¶¶ 4(b)(i) - (iv).)
Respondent
contends that there is no evidence that it registered the disputed domain in
bad faith or was registered or acquired solely
for the purpose of profiting from
Complainant’s trademark rights.
15. Respondent states that it has not
attempted to improperly lure and confuse users looking for information on
Complainant’s services.
Where a complainant’s mark is a common word with
substantial third party use, as it is here, the complainant must proffer
evidence
that demonstrates that respondent has specifically intended to confuse
consumers seeking out complainant.
There is no such proof here.
16. At no time did the web page at <target.org>
link
directly to an adult website. The link
which contained a warning of adult content led to another warning page. Only if the user clicked the link on the
warning page would it be taken to a third-party site offering pornography. Nothing under the Policy holds that such a
link constitutes bad faith. In any
event, the adult content was not present at, or before, the time the Complaint
was initiated – and there is no allegation that
it was present at that time. Respondent argues that Complainant admits in
its Complaint (attachment) that the adult link did “not appear on the website
as of the
date of th[e] letter.” In any
event, it is further contended, the adult link was removed by Respondent
independent of any notice from Complainant of a pending
dispute.
FINDINGS
The Panel finds
Complainant has proven the following element:
(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.
The Panel finds
Complainant has failed to prove either of the following essential elements:
(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.
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; and
(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.
Application
of the above ICANN Policy will not be made to the facts of and law of this
case:
Complainant asserts that it has established rights
in the TARGET mark and the Bullseye design through numerous registrations with
the United States Patent and Trademark Office (Reg. No. 845,193 issued February
27, 1968, Reg. No. 1,386,318 issued March 11, 1986,
Reg. 2,793,901 issued
December 16, 2003 and Reg. No. 2,755,538 issued August 26, 2003). Moreover,
Complainant states that it has used the mark in commerce since 1962. Men’s Wearhouse, Inc. v. Wick, FA
117861 (NAF Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive
and have acquired secondary
meaning.”); 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).
Complainant
avers that the disputed domain name is identical to Complainant’s TARGET mark
because the domain name fully incorporates
the mark and merely adds the generic
top-level domain name (“gTLD”) “.org.”
Complainant argues that the addition of the gTLD is insufficient to
distinguish the domain name from the Complainant’s mark. See Maple Leaf Sports &
Entertainment Ltd. v. Toronto Maple Leafs!,
D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is
confusingly similar to Complainant’s marks, where Complainant
holds many
trademarks that contain the term “LEAFS”); Microsoft Corp. v.
Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> is identical to Complainant’s mark); BMW AG v.
Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt”
that the domain name <bmw.org> is identical to Complainant’s
well-known
and registered BMW trademarks).
In determining whether the domain name
and the TARGET mark are "confusingly similar", recent federal court
decisions guide
the Panel to the conclusion that confusing similarity should be
determined by comparing the mark and domain name alone, independent
of the
other marketing and use factors usually considered in a traditional
infringement action. See, e.g.,
Northern Light Technology, Inc. v. Northern Lights Club, 2000 U.S.
Dist. LEXIS 4732 (D. Mass. Mar. 31, 2000). In this case, Respondent admits that
the disputed domain name and Complainant’s
trademark are identical.
Therefore, because the Complainant’s mark
and the domain name are identical, the first factor is met.
Respondent asserts
that it has rights in the domain name because Complainant’s mark is
generic. The Panel determines that
“target” is a generic term and a common word.
Target Software Solution GmbH v. Net Virtue, Inc., No
DBIZ20020277 (WIPO August 19, 2002) Complainant does not have monopoly over any
domain name with the word “target” in it. Target Brands, Inc. v. A:Dnet
Media Group and Edward Harrison, FA 227647 (NAF March 24, 2004) The Panel finds that Respondent has rights
to and legitimate interests in a domain name that consists of a generic or
common term. Int'l Holding v.
Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and
descriptive terms are legitimately subject to registration as domain names
on a
'first-come, first-served' basis."); Choice Courier Sys. Inc. v.
Kirkendale, D2002-0483
(WIPO July 23, 2002) (stating that “there is no requirement that the user of a
domain name must offer goods or services
bearing
a mark which matches the domain name. This is particularly so when the
mark is a generic word.”); SOCCERPLEX,
INC. v. NBA Inc., FA 94361 (NAF
May 25, 2000) (finding that Complainant failed to show that it should be
granted exclusive use of the domain name <soccerzone.com>,
as it contains
two generic terms and is not exclusively associated with its business).
Additionally, where a domain name is
generic, the first person to register it in good faith is entitled to the
domain name and this
is considered a “legitimate interest.” Target Sopftware
Solution GmbH v. NetVirtue, Inc., No. DBIZ2002-0277 (WIPO Aug. 19, 2002); CRS Technology Corporation v. CondeNet,
FA 93547 (Nat. Arb. Forum Mar. 28, 2000); Coming Attractions v.ComingAttractions.com, FA 94341 (Nat.
Arb. Forum May 11, 2000).
Furthermore, Respondent contends that it
has rights and legitimate interests in the domain name because the domain name
describes
Respondent’s business offerings.
The Panel determines that Respondent’s business is a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). Energy Source Inc. v. Your Energy Source, FA 96364 (NAF
Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in
the domain name where “Respondent has
persuasively shown that the domain name
is comprised of generic and/or descriptive terms, and, in any event, is not
exclusively associated
with Complainant’s business”); Canned Foods Inc. v. Ult. Search Inc.,
FA 96320 (NAF 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.).
Finally, Respondent
has offered persuasive evidence that it uses the disputed domain in connection
with an affiliate advertising program with
Overture.com, Inc., which posts
links related to the word “target.”
Links appear at the website located at <target.org>, which relate to target practice, hunting,
archery, and other sports equipment.
Respondent explains that the links on website are auto-generated by
Overture.com, using a sophisticated system that provides links
relevant to the
dictionary meaning of the word target.
These links also include goal, goal setting, personal goal, career goal,
hinting equipment, hunting gear and other sports-related
and goal related links
which are prominently displayed on Respondent’s website. This use of a website to provide generic
links can support the Respondent’s legitimate interest. Williams, Babbitt & Weisman, Inc. v.
Ultimate Search, No. 98813 (NAF Oct. 8, 2001) The operation of a portal website in this manner is a legitimate
interest. 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); Modern Props, Inc. v. Wallis, FA 152458 (NAF June 2,
2003)
In conclusion,
the Panel determines that Respondent has legitimate rights and interests in the
domain name.
Respondent
argues that Complainant has failed to meet its burden in proving bad faith
registration and use because Complainant has
failed to point to particular
facts and circumstances supporting its allegations. The Panel agrees. Graman USA Inc. v. Shenzhen Graman Indus.
Co. FA 133676 (NAF Jan. 16, 2003) (finding that general allegations
of bad faith without supporting facts or specific examples do not
supply a
sufficient basis upon which the Panel may conclude that Respondent acted in bad
faith); Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding
no bad faith registration or use of the domain name <racegirl.com> where
no evidence
was presented that Respondent intended to divert business from
Complainant or for any other purpose prohibited by UDRP Rules); Energy
Source Inc. v. Your Energy Source, FA 96364 (NAF Feb. 19, 2001) (finding
that Respondent successfully rebutted Complainant’s averments that it
registered and used
the domain name at issue in bad faith and that Complainant
produced no credible evidence of bad faith on the part of Respondent).
Further,
Respondent states that the disputed domain name is a generic term. The Panel determines that the domain name is
comprised of a generic term and finds that Respondent has not registered or
used the
<target.org> domain name in bad faith. Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (NAF Mar. 7, 2001) (finding the domain name
<seminarsuccess.com> to be generic and that Respondent registered and
used the domain name in good faith “because Respondent selected the name in
good faith for its web site, and was offering services
under the domain name
prior to the initiation of the dispute”); Canned Foods Inc. v. Ult. Search Inc., FA 96320 (NAF Feb.
13, 2001) (holding that where the domain name is a generic term, it is
difficult to conclude that there was a
deliberate attempt to confuse on behalf
of Respondent, and stating that “[i]t is precisely because generic words are incapable
of
distinguishing one provider from another that trademark protection is denied
them”).
Respondent
avers that it registered the disputed domain name to display websites to
promote the contextual meaning of “target,” as
in “target practice.” The Panel finds that Respondent did not
register or use the domain name in bad faith based on Respondent’s intent. Schering AG v. Metagen GmbH,
D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or
use the domain name <metagen.com> in bad faith
where Respondent
registered the domain name in connection with a fair business interest and no
likelihood of confusion was created);
Mule Lighting, Inc. v. CPA, FA
95558 (NAF 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); DJF
Assocs., Inc. v. AIB Communications, FA 95612 (NAF Nov. 1, 2000) (finding
Respondent has shown that it has a legitimate interest in the domain name
because Respondent
selected the name in good faith for its website, and was
offering services under the domain name prior to the initiation of the
dispute).
In this case, there is has been no showing that the Respondent
has engaged in any pattern of conduct concerning the registration of domain
names and nor is there evidence of the
conduct referred to as “cybersquatting.”
The purpose of the ICANN policy is narrow in scope applying to clear cases of
“cybersquating”
and “cypberpiracy”. Shirmax
retail Ltd. V. CES Marketing, Inc., Case No. AF-0104 (e-Rosolution March
20, 2000) There is, as well, no evidence of confusion in the marketplace or
that Respondent
has taken advantage of such confusion for its own business
interests; nor is there any evidence that Respondent registered this domain
name to divert customers or to try to sell this domain name to Complainant at a
profit or a competitor or
otherwise to interfere with Complainant’s trademark or business. Lumena s-ka zo.o. v. Express
Ventures LTD,
FA 94375 (NAF May 11, 2000) (finding no bad faith where the domain name
involves a generic term, and there is no direct evidence
that Respondent
registered the domain name with the intent of capitalizing on Complainant’s
trademark interest). Complainant’s
allegations regarding links to a pornographic site (which appear to have been
limited and removed prior to commencement
of this action) are insufficient to
establish bad faith in this case.
There
is no evidence of bad faith. Complainant has failed to establish this element.
DECISION
Having
established only one of the three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Steven L. Schwartz Panelist
Dated: July 9, 2004
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