DECISION

Target Brands, Inc. v. ALDnet Media Group and Edward Harrison

Claim Number: FA0401000227647

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. Respondents are ALDnet Media Group and Edward Harrison (collectively, “Respondent”), represented by Dean Boland of 3723 Pearl Road, Cleveland, OH 44109.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <targetwholesale.com>, registered with Register.com.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

Honorable Gilbert Thornton Cave, Honorable Bruce Meyerson and 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 20, 2004.

On January 20, 2004, Register.com confirmed by e-mail to the Forum that the domain name <targetwholesale.com> is registered with Register.com and that the Respondents are the current registrant of the name. Register.com has verified that Respondents are bound by the Register.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 February 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 23, 2004 by which Respondents could file a Response to the Complaint, was transmitted to Respondents via e-mail, post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts, and to postmaster@targetwholesale.com by e-mail.

A timely Response was received and determined to be complete on February 23, 2004.

A reply was received from Complainant on or about March 1, 2004.

On March 11, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Gilbert Thornton Cave, Judge Bruce Meyerson and Houston Putnam Lowry (Chartered Arbitrator) as Panelist. Houston Putnam Lowry served as the chair.

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 TARGETincluding U.S. 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 web site 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 web site.

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 TARGETmark is of great and incalculable value to Complainant. Complainant closely controls the use and reproduction of the TARGETmark 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

10. The domain name <targetwholesale.com> fully incorporates Complainant’s TARGET mark, and is nearly identical to the name of Complainant’s exclusive licensee, Target Stores. Respondents’ domain name is otherwise identical to Complainant’s TARGET mark except for the use of the generic word “wholesale.” The use of the suffix “wholesale” 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 Guineess 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 the Complainant combined with a generic word or term).

11. Given the nearly identical nature of targetwholesale.com to TARGET®, the domain name is confusingly similar to Complainant’s mark.

Absence of Trademark Rights in Respondents

12. Upon information and belief, Respondents have no trademark or intellectual property rights in the domain name <targetwholesale.com>. Respondents are not, and have never been, a licensee of Complainant or its predecessors in interest. At the time Respondents registered the domain name, the TARGET mark was sufficiently distinctive or famous to give constructive notice to Respondents that the registration of domain names at issue would violate Complainant’s rights. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 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 the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

13. Upon information and belief, Respondents are not commonly known as <targetwholesale.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, Respondents are not using the domain name in connection with the bona fide offering of goods and services. When an Internet user inputs the domain name <targetwholesale.com>, the user is immediately transferred to a website that features advertising for a variety of goods including apparel, electronics, jewelry and toys – the same type of goods available at TARGET® stores and available on-line at <target.com>. 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. Respondents are not making any legitimate noncommercial or fair use of the domain name <targetwholesale.com>. See Alta Vista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that using the domain name to direct user 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, Respondents lack any valid rights or legitimate interests in the domain name.

Bad Faith Registration and Use of Domain Name

17. Respondents registered and used the domain name <targetwholesale.com> after the TARGET mark was already distinctive and famous. Complainant has not authorized or had control over Respondents’ use of the domain name <targetwholesale.com> or any activities associated with the domain names.

18. Respondents registered the domain name <targetwholesale.com> to divert Internet users to a website featuring advertisements for goods in direct competition with Target’s goods/services. Respondents are capitalizing on the confusing similarity between <targetwholesale.com> and the TARGET® mark to redirect users to their 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. Internet users are misleading led to conclude that they are visiting a legitimate website affiliated with Target and, once at the site, are offered links to products of competitors of Target. Respondents’ addition of a disclaimer on their website does not absolve their bad faith registration and use of the domain name. See Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that Respondent wishes to trade on the fame of Complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion); see also Ciccone v. Parisi, D-2000-0848 (WIPO Oct. 12, 2000) (finding that the use of a disclaimer on Respondent’s website was insufficient to avoid a finding of bad faith since the disclaimer might be ignored or misunderstood by Internet users and a disclaimer did nothing to dispel initial interest confusion that was inevitable from Respondent’s actions.); see also Avery Dennison Corp. v. Wilkerson, FA 99593 (Nat. Arb. Forum Oct. 22, 2001) (finding that Respondents were attempting to attract for commercial gain Internet users to their website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the [Respondents’] website despite the use of a disclaimer.

20. In light of these circumstances, Respondents have registered and used the domain name <targetwholesale.com> in bad faith under Policy § 4(b).

21. Respondents’ bad faith registration and use of the domain name <targetwholesale.com> 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. Respondents

Similarity of the Domain Name to Complainant’s Trademarks

Complainant argues that Respondents’ domain name <targetwholesale.com> “fully incorporates Complainant’s TARGET mark, and is nearly identical to the name of Complainant’s exclusive licensee, Target Stores.” Complainant has no intellectual property rights in the term “target wholesale” or “targetwholesale.com.” While Respondents concede that Complainant does have intellectual property rights in their registered trademark of the generic term “Target”, Complainant cannot cite any authority for its attempt here to extend those rights to every domain name that includes the generic term “target” including Respondents’ domain name. Complainant has chosen a trademark that includes a generic and common word used throughout the English-speaking world long before Complainant’s adoption of that word as its trademark. That choice by Complainant cannot act to assist them in asserting dominion over the whole of domain names which include the word target. It is akin to permitting Complainant to assert rights in every other trademark that includes the word “target.”

Complainant argues that the use of the word “wholesale” in Respondents’ domain “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). The citation to Toshiba, however, is distinguishable from the facts in this matter.

The trademark “Toshiba” is not a common and generic term as is Complainant’s mark. Any domain name with the word “Toshiba” immediately associates that address with the Toshiba company. There are thousands of sites (and registered trademarks) that incorporate the generic word “target” over which Complainant has no legitimate rights. If Complainant’s confusion argument were legitimate, it forms the basis for the de-registration of any domain name with the word target in it.

Complainant asserts that Respondents’ domain name is “nearly identical” to its “Target” mark. It is not.

First, Internet users would have to input an additional nine distinct characters (in addition to the six which comprise Complainant’s generic trademarked term “Target”) in order to arrive at Respondents’ domain name. Complainant cannot seriously contest that any Internet user would be so confused as to how to find <target.com> that they would accidentally type in the nine additional characters in <targetwholesale.com> in an attempt to arrive at the Complainant’s home page. The two domain names are only similar because they share six letters in common – the six letters that represent Complainant’s trademark – a common word in the English language that predates Complainant’s intellectually property rights in its mark by centuries.

Absence of Trademark Rights in Respondents

Complainant asserts that “Respondents have no trademark or intellectual property rights in the domain name targetwholesale.com.” However, respondents have consistently been using that domain name since its registration in 2002. They have maintained a web site at its location since that time and tracked traffic to that location for business purposes.

In contrast, Complainant has not alleged that it did then, or does now, sell or market wholesale products or, more to the point, operate a pay-per-click search engine catering to wholesale product manufacturers and purchasers as Respondents have for many years.

It is Complainant who does not have any trademark or intellectual property rights in the domain name and cannot reasonably assert that it does. Complainant has never used or registered “target wholesale” as a mark. The word “targetwholesale” or words “target wholesale” are not, in fact, a registered trademark in the United States as of this writing. Complainant does not allege in its Complaint that it is in the business of producing, marketing or distributing any wholesale products. There are more than 2000 trademarks currently registered with the United States Patent Office that include the generic term “target.”

For example, consider the following trademarks, not owned by complainant, that include the generic term “target.” All of these registered trademarks have domain names associated with them that are identical to their respective marks.

TARGET POINT
Goods and Services	IC 028. US 022 023 038 050. G & S: GOLF BALLS
Mark Drawing Code	(1) TYPED DRAWING
Serial Number	78315604
Filing Date	October 20, 2003

TARGETWARE
Goods and Services	IC 009. US 021 023 026 036 038. G & S: Permission based software for automating and enhancing marketing and sales. FIRST USE: 20010503. FIRST USE IN COMMERCE: 20010927
Mark Drawing Code	(1) TYPED DRAWING
Serial Number	78281244
Filing Date	July 31, 2003

TARGETSITE
Goods and Services	IC 035. US 100 101 102. G & S: Targetsite - Focused, high-impact websites that are optimized to connect company content to a specific target audience, pre-determined by interest or demographic. FIRST USE: 20020320. FIRST USE IN COMMERCE: 20020320
Mark Drawing Code	(1) TYPED DRAWING
Serial Number	78255674
Filing Date	May 29, 2003

Complainant also asserts that its TARGET trademark “was sufficiently distinctive or famous to give constructive notice to Respondents that the registration of domain names at issue would violate Complainant’s rights.” This argument is only valid if ICANN recognizes the right of the Complainant to assert intellectually property rights over any domain name that includes the generic word “target” including the domain names such as <targetpoint.com>, <targetsite.com> and <targetware.com> that are the above listed registered trademarks of entities other than complainant.

Complainant owns and operates a web site at <target.com> which, under their theory in this complaint, would entitle them to seize the above domain names that are entirely comprised of trademarked words or phrases Complainant does not own. Also, Complainant’s retail stores sell products including many that could be classified with the suffix “ware” such as hardware, kitchenware, software etc. Their theory in this matter would entitle them to seize control of <targetware.com> on that basis as well. Complainant cannot simply assert rights in every domain name containing the generic term “Target” that it has chosen to use in connection with its business.

The reality of this complaint is simple, Complainant appears to desire to embark upon a business involving the sale or distribution of wholesale products under their trademarked name. Instead of attempting to purchase a domain name that Respondents legally own and operate at market value, they are using ICANN to substitute for a straw man in order to avoid purchasing the domain name outright. Respondents should not lose the hard work and effort they have poured into their business and this domain name merely because Complainant now decides it wants to market wholesale products.

For example, there is currently a company named Target Software, unaffiliated with Complainant, marketing software at <targetsoftware.com>. Should this complaint be sustained, Complainant will be able, at some random point in the future when it decides it would like to market software under its brand, to seek to have this domain name taken away from its current owner using the same arguments it uses here. A finding for Complainant here would put on notice every other domain name using the generic term “target” they are in danger of losing their hard earned good will and web site address to Complainant for nothing more than daring to use the common English word “target.”

Complainant cites to Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) for the proposition that respondents registered the domain name in bad faith because 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.” In fact, it is precisely Respondents’ proper and active use of the domain name that has caused Complainant to use this dispute process to seize the domain. Respondents have continuously used the domain name to promote their pay per click search engine business catering to users seeking wholesale products. That continuous use has occurred without creating any false impression of an association with Complainant. Respondents’ “false impression” is no more false than any of the domain names mentioned herein that clearly include the word “target.”

Complainant cannot cite a single incident in which an Internet user was mislead into arriving at Respondents’ site or upon arriving at Respondents’ site were mislead into believing they had arrived at a site affiliated with Complainant. Nothing about Respondents’ use of this site indicates any affiliation with Complainant or any attempt to confuse site visitors as to an affiliation.

Complainant alleges that “Respondents are not using the domain name in connection with the bona fide offering of goods and services.” This argument fails when Complainant’s own copy of the web site is reviewed. As it is clearly seen from the topmost graphic, the page is offering search engine services catering to wholesale vendors and their customers. Search engine services are one of the founding businesses on the Internet. In fact, it is the one technology that makes the Internet to have any value at all to users.

Clicking on the links supplied at <targetwholesale.com>, takes users to the specified location they are interested in based upon the term clicked. This is the most common use of the hyperlinked essence of the internet – i.e. starting at one site and clicking through to other sites as a user’s interests dictate.

Complainant alleges that Respondents are misdirecting consumers bound for Complainant’s site to Respondents’ site using “target” improperly as part of Respondents’ domain name. A review of the results of a Google search of the phrase “target wholesale” demonstrates this fact. The results list for this search does not include respondents’ site. In contrast, a Google search of the generic term “target” results in a list of sites that also do not include Respondents’ site. The majority of sites found when a user searches for Complainant’s site are, in fact, owned and operated by Complainant as this results list demonstrates.

Complainant’s citation to decision language that “[r]espondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant’s site to a competing website” is proveably false. Respondents’ do not compete with Complainant and neither does their site. Complainant has not alleged that it also operates a pay per click search engine catering to users seeking wholesale products.

Bad Faith Registration and Use of Domain Name

Respondents’ registration and use of <targetwholesale.com> do not meet any of the elements of bad faith as alleged by Complainant.

Respondents’ registered six separate domain names on the same day as their registration of <targetwholesale.com>. A review of those domain names reveals that Respondents sought to attract to its search engine, Internet users seeking wholesale products not misdirect users destined for Complainant’s site:

Domain name		Registration Date
wholesalesite.com		March 21, 2002
searchforwholesale.com		March 21, 2002
search4wholesale.com		March 21, 2002
targetwholesale.com		March 21, 2002
ewholesalesearch.com		March 21, 2002
greatwholesale.com		March 21, 2002
werewholesale.com		March 28, 2002

Following the registration of <targetwholesale.com> Respondents made no attempt to communicate with Complainant to “sell, rent, or otherwise transfer the domain name registration to the complainant.” Respondents’ registration of the domain name also does not “prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.” Complainant concedes it owns and uses the domain name “reflecting their mark.” It is also clear that the Respondents did not register the domain name for the purpose of disrupting Complainant’s business. Complainant does not provide any evidence that the existence of the domain name and its use by Respondents has had any impact on Complainant’s business.

Complainant states that “Complainant has not authorized or had control over Respondents’ use of the domain name targetwholesale.com or any activities associated with the domain names.” While that statement is true, it is also true that Complainant has not authorized or had control over any of the other thousands of domain names containing the generic term “target,” whether held by the owner of a registered trademark in such domain name or not.

Complainant asserts that “Respondents registered the domain name targetwholesale.com to divert Internet users to a website featuring advertisements for goods in direct competition with Target’s goods/services.” As described above, respondents do not operate retail stores, do not sell goods to the public or business, do not advertise on television or in the newspaper or compete in any way with Complainant. Respondents operate a “pay per click” search engine on the Internet catering to users seeking wholesale merchandise. Complainant does not allege that it is in the wholesale goods business, although it is not a difficult stretch to argue that this complaint is based, in part, on their desire to establish an Internet presence in a new wholesale goods business. It does not allege it operates a “pay per click” search engine or even a free search engine for that matter and, therefore, cannot claim that Respondents are in competition with it.

A review of Complainant’s own description of itself is revealing:

“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.”

Nothing about this description says anything about wholesale goods. Complainant’s own description supports Respondents’ position that it does not compete with Complainant in its operation of a pay-per-click search engine.

Complainant asserts that “Internet users are misleading[ly] led to conclude that they are visiting a legitimate website affiliated with Target.” Complainant provides no proof for this claim at all. Users seeking Complainant’s site are not “misleadingly led” nor can they accidentally arrive at Respondents’ site using a major search engine. Respondents’ web site does not contain Complainant’s trademark other than to specifically disclaim any affiliation with Complainant.

The claim that Internet users are mistakenly arriving at Respondents’ site when they believed they were landing on a site affiliated with Complainant is imaginary. The only reliable way to arrive at Respondents’ site is to enter the entire domain name into the user’s browser address bar.

Complainant has failed to establish any intellectual property rights in the Respondents’ domain name (as they have failed to do so for thousands of other domain names that use the generic term “target”). In light of this failure, Respondents have not registered or used the domain name <targetwholesale.com> in bad faith under ICANN Policy §4(b).

Finally, Respondents’ registration and use of the domain name <targetwholesale.com> does not 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).

C. Additional Submissions

Complainant submitted a reply in accordance with the ICANN rules.

Similarity of the Domain Name to Complainant’s Trademarks

1. Complainant’s TARGET marks are clearly famous. Among other things, Complainant’s operation of over 1,100 TARGET® retail discount stores in 47 of the United States, its numerous valid United States Registrations, and its extensive advertising promotion throughout the United States for more than four decades has afforded Complainant’s TARGET marks an extremely high degree of recognition. For example, for the last three years, an on-line survey by Brandchannel.com showed that the TARGET® brand was one of the brands having the most impact on our lives in the United States and Canada in 2001, 2002 and 2003. Complainant was also selected as Advertising Age’s Marketer of the Year for 2000. Similarly, The National Post reported that retail consultants and analysts have said that Target is “one of the most prestigious names in the cutthroat discount retail business” and Forbes Magazine recognizes that “Target has solved the mystery of how to make the Web work for a mass retailer” and that Target is “one of e-tailing’s savviest players.”

2. Respondents claim that the domain name <targetwholesale.com> is not identical or confusingly similar to the TARGET Marks. Respondents’ claim hinges solely on the addition of the word “wholesale.” The word “wholesale” commonly means the sale of goods in bulk or quantity. Therefore, the word “wholesale” is clearly connected to the products and services that Complainant offers and increases the likelihood of confusion. See e.g., copies of U.S. Registration Nos. 2,793,901 and 2,755,538; see also, Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the westfieldshopping.com domain name confusingly similar because the WESTFIELD mark was the dominant element).

3. In addition, the Panel previously has found numerous domain names that similarly incorporate Complainant’s TARGET Mark to be confusingly similar and has awarded those domain names transferred to Complainant. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (awarding targetstore.net to Complainant); see also Target Brands, Inc. v. Romanov, FA 156249 (Nat. Arb. Forum June 2, 2003) (awarding targetstore.biz to Complainant); see also Target Brands, Inc. v. Melia, FA 158432 (Nat. Arb. Forum Aug. 13, 2003) (awarding target-xxx.com to Complainant); see also Target Brands, Inc. v. Party Night, Inc., FA 161276 (Nat. Arb. Forum June 16, 2003) (awarding <targetdvd.com> to Complainant); see also Target Brands, Inc. v. Hosting Provider Service, FA 187396 (Nat. Arb. Forum Sept. 30, 2003) (awarding <targetpills.com> to Complainant); see also Target Brands, Inc. v. Seventh Summit Ventures, FA 170634 (Nat. Arb. Forum Sept. 9, 2003) (awarding <taregt.com>, <targat.com>, <targey.com>, <targrt.com> and <targte.com> to Complainant); see also Target Brands, Inc. v. Shing, FA 190509 (Nat. Arb. Forum Oct. 7, 2003) (awarding <tarrget.com> and <targetr.com> to Complainant). The current matter is no different and should be resolved in the same manner.

Absence of Legitimate Rights in Respondents

4. Respondents registered and used the domain name <targetwholesale.com> long after Complainant’s rights in the TARGET Marks were established, long after Complainant’s TARGET Marks were registered with the USPTO, and long after Complainant’s TARGET Marks were famous. As such, Respondents are precluded as a matter of law from being able to have acquired any rights in any confusingly similar mark, including the name Target Wholesale or <targetwholesale.com>.

5. Respondents have no rights or legitimate interests in the <targetwholesale.com> domain name. They are simply exploiting the fact that Complainant’s customers and potential customers will, from time to time, include the term “wholesale,” which is closely related to the products and services that Complainant offers, in a web browser when looking for information on TARGET® services and products. Respondents are attempting to confuse and to divert such customers to their web site for their own commercial gain through offering a pay-per-click search engine. This use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (finding respondent’s only possible reason for using the domain name <hpcanada.com> is to intentionally attract, for commercial gain, Internet users to Respondent’s web site); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding that a respondent who sought profit by redirecting Internet traffic connected with the MSNBC mark had no rights or legitimate interests in the famous mark); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona-fide use where a respondent used the domain name to divert Internet users to its competing web site); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use of a mark when a respondent was using another’s marks to divert Internet users to its own web site. Further, by Respondents own admission, they chose the domain name <targetwholesale.com> to attract users to their search engine.

6. Respondents admit they were not commonly known by the name Target Wholesale or <targetwholesale.com> prior to registration of the domain name. Thus, Respondents are not commonly known by the domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); See also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark).

Bad Faith Registration and Use of Domain Name

7. Although Respondents allege that the web site located at <targetwholesale.com> is not a retail sales web site, it provides users with links to web sites that are selling consumer products. Respondents’ “wholesale” distinction in this context is not relevant. Respondents’ choice of the word “wholesale” simply leads internet users to believe the site will feature TARGET® products and services to consumers in bulk or large quantities.

8. Consumers seeking information on TARGET® products or services available in bulk or quantity could easily assume that a site with the domain name <targetwholesale.com> is associated with Complainant, and would be highly surprised to discover that the owner of the domain name has no relationship to Complainant. Respondents are not a licensee and are not affiliated with Complainant in any manner. Respondents’ continued use of the domain name <targetwholesale.com> is likely to confuse Complainant’s customers and potential customers into believing that there is some affiliation, connection, sponsorship, approval or association between the Respondents and Complainant when in fact none exists. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (“Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding a suggestion of opportunistic bad faith where a mark was obviously connected with the complainant and its products and where the respondent had no connection with the complainant or its products); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith when the web site in dispute was linked by the respondent to a second web site, from which second web site the respondent presumably received a portion of advertising revenue because of his direction of Internet traffic to that site); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

FINDINGS

The Panel finds Complainant has failed to prove any of the following essential elements:

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 Respondent has no rights or legitimate interests in respect of the domain name; and

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:

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 Respondent has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Respondents concede Complainant has rights in the registered TARGET mark. However, the addition of the word “wholesale” to the generic term “target” is sufficient to overcome the confusing similarity between the disputed domain name and Complainant’s mark. See Zero 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."); see also Capt’n Snooze Mgmt. v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000) (stating that while “Snooze is an integral part of Complainant’s trademark registrations . . . this does not entitle the Complainant to protection for that word alone”); cf. Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”).

Respondents note:

“Complainant has chosen a trademark that includes a generic and common word used throughout the English-speaking world long before Complainant’s adoption of that word as its trademark. That choice by Complainant cannot act to assist them in asserting dominion over the whole of domain names which include the word target.”

Complainant engages in retail merchandizing. The very impression created by <targetwholesale.com> is that the sales are wholesale and not retail. Complainant does not have a monopoly of any domain name with the word “target” in it.

Rights or Legitimate Interests

Respondents are commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) because Respondents have consistently used the name since 2002 in connection with its sale of wholesale products. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name); see also World Publ’ns, Inc. v. World Pen, Seattle Pen, Inc., D2000-0736 (WIPO Sept. 14, 2000) (finding that as Respondent registered the trade name "WORLD PEN" in July 1996 and had been conducting business under that name since that date, it had rights or legitimate interests in the disputed domain name); see also Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding that Respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990's).

Respondents also do not directly compete with Complainant. Respondents are in the wholesale channel of commerce. Complainant is engages in retail sales, which is a distinctly different channel of commerce.

The domain name is being used in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) because it is offering search engine services catering to wholesale vendors and their customers. See 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 Burke Inc v. Leader Technologies LLC, FA 102822 (Nat. Arb. Forum Mar. 29, 2002) (finding that Respondent’s use of the disputed domain name to offer non-competing goods and services in commerce, starting twelve months prior to Complainant’s registration, was evidence that Respondent had rights or legitimate interests in the disputed domain name).

It should be noted that Respondents registered this domain name on March 21, 2002. There was no indication Complainant took prompt actions to protest its rights to the domain name. In the meantime, Respondents have erected a web site and acquired rights to this domain name.

Registration and Use in Bad Faith

Respondents did not intend to misdirect Internet users attempting to reach Complainant. Respondents registered six other domain names near the registration date for the disputed name (all but one name was registered on March 21, 2002) to prove that it did not intentionally divert Internet users away from Complainant, but merely was attempting to attract users to a search engine that provided wholesale products. See also 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); 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); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum 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).

Respondents are not competitors of Complainant because Complainant does not offer wholesale goods; rather, Complainant is in the retail discount business. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum 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”).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Honorable Gilbert Thornton Cave, Honorable Bruce Meyerson, and
Houston Putnam Lowry, Chartered Arbitrator and Chair, Panelist
Dated: Wednesday, March 24, 2004

Hit Counter