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Generic Top Level Domain Name (gTLD) Decisions |
Target Brand, Inc. v. Dauren Niazov and
Targetporn JSC
Claim Number: FA0412000381229
PARTIES
Complainant
is Target Brands, Inc. (“Complainant”),
represented by Jodi A. DeSchane, of Faegre & Benson, 2200
Wells Fargo Center, 90 South Seventh Street, Minneapolis, MN 55402. Respondent is Dauren Niazov and Targetporn JSC (collectively,
“Respondent”), Isanova 60-30, Bishkek, 73244, KYRGYZ REPUBLIC.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <targetporn.com>,
registered with Direct Information Pvt.
Ltd., d/b/a Directi.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.
David
P. Miranda, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
14, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on December 15, 2004.
On
December 15, 2004, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by
e-mail to the National Arbitration Forum that the
domain name <targetporn.com> is registered
with Direct Information Pvt. Ltd., d/b/a Directi.com and that the Respondent is
the current registrant of the name. Direct
Information Pvt. Ltd., d/b/a Directi.com has verified that Respondent is bound
by the Direct Information Pvt. Ltd., d/b/a Directi.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
December 21, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 10, 2005 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@targetporn.com by e-mail.
A
timely Response was received and determined to be complete on January 10, 2005. Although Respondent failed to submit a hard
copy of the Response as required by ICANN Rule 5(b), the Response was
considered.
Complainant
timely submitted a Reply on January 18, 2005.
On January 14, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David P. Miranda, Esq. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Target Brands, Inc. (“Target”), has operated a chain of Target retail discount
department stores since 1962 and is the
holder of numerous valid United States
trademark registrations for the TARGET mark, the bull’s-eye design mark, and
integrated TARGET
and bull’s-eye design mark, as well as trademark
registrations in numerous foreign countries.
Several of Complainant’s U.S. trademark registrations are specifically
for use in connection with online retail store services. Target has an online shopping site at
<target.com>. Target contends
that its marks are commercial icons that enjoy a high degree of recognition
with the public in the United States,
and that in light of the distinctiveness
of its marks, the duration and extent of their use and their high degree of
recognition,
the Target marks are famous marks as defined pursuant to U.S.
trademark law. Target contends that it
has developed a family-oriented reputation and substantial body of goodwill
with respect to its marks. Target
contends that on September 17, 2003, Respondent, using the name Crafter Zet,
registered the domain name at issue, <targetporn.com>, and began
using the domain name to connect Internet users to a website featuring
pornographic content. On December 10,
2003, Target sent a letter to Respondent advising that use of the TARGET mark
in association with such content was
inconsistent with the image and goodwill
associated with the TARGET mark. Target
contends that following receipt of Target’s December 10, 2003 letter,
Respondent added a bull’s-eye design to its website in
a color that the public
has come to associate with Target and Target’s goods and services.
Target
contends that the domain name at issue appropriates Target’s famous TARGET
mark, and that the addition of the generic word
“porn” to Complainant’s TARGET
mark suggests that the goods and services marketed are those of Target’s with a
pornographic content,
and the domain name is confusingly similar to
Complainant’s mark. Target contends
that Respondent, Dauren Niazof and Targetporn JSC (collectively, “Respondent”),
has no trademark or intellectual property
rights in the domain name, is not
using the domain name in connection with a bona fide offering of goods or
services, and is not
making any legitimate non-commercial or fair use of the
domain name at issue. Target contends
that Respondent has registered and used the domain name in bad faith under the
ICANN’s Policy Section 4(b).
B.
Respondent
Respondent
contends that the domain name in question is not connected with Complainant’s
trademark and that the word “target” is a
common word. Respondent further contends that it did not
add a bull’s-eye to its website, but rather a design that is similar to the
primary meaning
of the word “target.”
Respondent contends that it is using the word “target” as a verb, its
use is not a trademark use and thus does not infringe upon Complainant’s
rights
or trademark. Respondent contends that
there are more than 2,000 trademarks currently registered with the United
States Patent and Trademark Office
that include the generic term “target.” Respondent further contends that he owns a
registered company known as Targetporn JSC, and this company has operated the
disputed
domain name since the time of the domain’s registration in 2003. Respondent contends that there is no proof
that the public mistakenly believes that Respondent’s website has been sponsored,
approved,
or endorsed by Complainant, or that the public accidentally arrives
at Respondent’s site.
C.
Additional Submissions
Target
submits a reply in which it contends that Respondent is not commonly known by
the name “Targetporn” because he registered the
domain name to “Crafter Zet,”
and it was not until after Complainant contacted Respondent that Respondent
changed the registration
of the domain name to “Targetporn JSC.”
FINDINGS
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.
Complainant holds numerous valid U.S.
trademark registrations for the TARGET mark, including Registration Numbers 845,193
(issued
February 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 December 16, 2003 for “on-line retail
store services featuring a wide variety
of consumer goods”), and 2,755,538
(issued August 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 <target.com>
domain name.
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, <targetporn.com>, on September 17, 2003. Respondent uses the domain name to connect
users to pornographic content.
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
has rights in the TARGET mark through numerous registrations with the United
States Patent and Trademark Office (“USPTO”)
(Reg. No. 845,193 issued February
27, 1968) and with various international trademark authorities as well as
through continuous use
of the mark in commerce since 1962. See 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); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which
Respondent
operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction).
Complainant
has established that the TARGET mark is a famous mark. In addition, the TARGET trademark has been
registered and used for online services, and thus could be considered to use
the same channels
of trade as Respondent.
Target also has registered trademarks that use the TARGET mark as a
house mark for other goods and services, including SUPER TARGET,
TARGET DESK
CARD, TARGET HOUSE, TARGET OPTICAL, TARGET CENTER and TARGET GREATLAND.
The
domain name <targetporn.com> entirely
appropriates Complainant’s famous TARGET mark.
Respondent merely adds the suffix “porn” to Complainant’s mark. Recent Panel decisions have found that the
addition of such term to a mark does not change the fact that the dominant
feature of the
domain name is Complainant’s mark. See Am. Online, Inc. v. GSD Pty. Ltd, FA 169083 (Nat. Arb.
Forum Sept. 2, 2003) (finding that <aolteen.com> and <icqporn.com>
are confusingly similar to Complainant’s
AOL and ICQ marks.); see also
Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec.
14, 2004) (finding that <porntarget.com> is confusingly similar to
Complainant’s TARGET mark);
see also Vivendi Universal Games v. Exodus
Hosting, FA 245969 (Nat. Arb. Forum Apr. 27, 2004) (finding that
<blizzardporn.com> is confusingly similar to Complainant’s BLIZZARD
mark); see also Microsoft Corp. v. S.L., Mediaweb, D2003-0538 (WIPO
Sept. 17, 2003) (finding that <msnporno.com> is confusingly similar to
Complainant’s MSN mark); see also Google Tech. Inc. v. Internet Hispano,
S.L., FA 176533 (Nat. Arb. Forum Sept. 16, 2003) (finding that
<googleporno.com> is confusingly similar to Complainant’s GOOGLE
mark); see
also Cingular Wireless LLC v. V T X, Inc., D2003-0446 (WIPO Sept. 8, 2003)
(finding that <cingularporn.com> is confusingly similar to Complainant’s
CINGULAR mark); see also Acad. of Motion Picture Arts and Scis. v. Nado,
D2003-0541 (WIPO Aug. 24, 2003) (finding that <porno-oscar.com> is
confusingly similar to Complainant’s OSCAR mark); Caesars World, Inc. v.
Yahorau, D2004-0513 (WIPO Aug. 31, 2004) (finding that
<pornocaesar.com> is confusingly similar to Complainant’s CAESARS mark).
Respondent has
not submitted proof that it is commonly known by the domain name. Respondent only began using the “Targetporn
JSC” name in its WHOIS information after receiving a “cease and desist” letter
from Complainant. See
Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not
“commonly known by” the <shantiyogaworks.com> domain name despite
listing its name as “Shanti Yoga Works” in its WHOIS contact information
because there was “no affirmative evidence
before the Panel that Respondent was ever ‘commonly known by’ the disputed
domain name prior to
its registration of the disputed domain name”); see
also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048
(Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and
legitimate interests in the NEIMAN MARCUS mark,” in holding
that Respondent was
not commonly known by the <neiman-marcus.net> name, despite naming
itself “Neiman-Marcus” in its WHOIS contact information).
Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the mark precede Respondent’s registration; (3)
Respondent is not commonly known by the domain
name in question).
Respondent is using a domain name that is
a confusingly similar variation of Complainant’s famous mark to operate a
commercial pornographic
website. See
Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding
that the use of a domain name that is confusingly similar to an established
mark
to divert Internet users to an adult-oriented website “tarnishes
Complainant’s mark and does not evidence noncommercial or fair use
of the
domain name by a respondent”); see also McClatchy Mgmt. Serv., Inc. v.
Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that
Respondent’s use of the disputed domain names to divert Internet users
to a website that features pornographic material, had been “consistently held”
to be neither
a bona fide offering of goods or services . . . nor a legitimate
noncommercial or fair use).
Complainant
argues that Respondent had constructive knowledge of Complainant’s rights in
the TARGET mark due to the immense fame attributed
to the mark as well as to
the fact that Complainant has registered the mark with numerous trademark
authorities worldwide. Additionally,
Complainant asserts that Respondent had actual knowledge of Complainant’s
rights in the mark due to the fact that Respondent’s
domain name resolves to a
website featuring a logo that is a slight variation of Complainant’s famous
concentric circle logo. Respondent’s registration
of a domain name that is a confusingly similar variation of Complainant’s
TARGET mark with actual or constructive
knowledge of Complainant’s rights in
the mark is evidence that Respondent registered and used the domain name in bad
faith pursuant
to Policy ¶ 4(a)(iii). See
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status
that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that Respondent’s registration and use of an identical and/or
confusingly similar domain
name was in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it).
Respondent’s
use of a domain name confusingly similar to Complainant’s famous mark to direct
Internet users to a website featuring
pornographic material is evidence that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(a)(iii). See 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); see also Six Continents Hotels,
Inc. v. Nowak, D2003-0022 (WIPO March 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.”).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <targetporn.com>
domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: January 25, 2005
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