National Arbitration Forum

DECISION

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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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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