Target Brands, Inc. v. 4160894
Claim Number: FA0401000227648
Complainant is Target Brands, Inc. (“Complainant”) represented by Jodi A. DeSchane, of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South 7th Street, Minneapolis, MN 55402. Respondent is 4160894 Canada Inc. (“Respondent”) represented by John Lee, of Fraser Milner Casgrain LLP, 99 Bank Street, Suite 1420, Ottawa, ON, K1P 1H4, CANADA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <targetshopping.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 16, 2004; the Forum received a hard copy of the Complaint on January 21, 2004.
On January 16, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <targetshopping.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 16, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on February 17, 2004.
Complainant submitted a timely reply on February 23, 2004. Respondent submitted a timely sur-reply on March 1, 2004.
On February 24, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The Target Stores division of Target Corporation (“Target”), a licensee of Complainant, has since 1962 operated a chain of TARGET® retail discount department stores, now numbering more than 1,100 stores in 47 states.
2. Over the years, Target, TARGET® stores, and Target’s other commercial undertakings have developed a national reputation for quality, and value. This well-deserved and hard-earned reputation is reflected in the substantial and valuable body of goodwill symbolized by the well-known TARGET mark.
3. The TARGET mark is a commercial icon that has for many years been extensively used and advertised. As a result, the TARGET mark enjoys an extremely high degree of recognition with the public in the United States.
4. In fact, in light of the distinctiveness of the mark, the duration and extent of the use of the mark in connection with retail department store sales services, the duration and extent of advertising and publicity of the mark, and the high degree of recognition of the mark, the TARGET mark is a famous mark as defined in 15 U.S.C. §1125(c).
5. Complainant holds numerous valid United States registrations for the mark TARGET including United States Trademark Registration No. 845,193, registered February 27, 1968, and for the mark TARGET and the Bullseye design, U.S. Trademark Registration No. 1,386,318, both for use in connection with, among other things, retail department store sales services.
6. Complainant is also the owner of U.S. Trademark Serial No. 76/418,297 for the mark TARGET and U.S. Trademark Serial No. 76/418,296 for the mark TARGET and the Bullseye Design both for use in connection with on-line retail store services featuring a wide variety of consumer goods, which have been in use in connection with the on-line services since at least as early as 1998 and 1999 respectively.
7. Target is active in electronic commerce, operating an informational and on-line shopping site at <target.com>. To connect with Target’s website at TARGET.COM, an Internet user types “www.target.com.” If the user has more sophisticated software, the user may simply type “target.com,” the domain name associated with Target’s website.
8. As a result of, among other things, Target’s continuous use and extensive advertising promotion, including nationwide television campaigns, the TARGET mark is known, among other places, throughout the United States as identifying Complainant’s exclusive licensee as a source of quality retail services.
9. The highly-distinctive TARGET mark is of great and incalculable value to Complainant. Complainant closely controls the use and reproduction of the TARGET mark to ensure that all of Target Stores’ current and potential customers can rely upon the mark as a symbol of high quality products and services.
Similarity of the Domain Name to Complainant’s Trademarks
10. The domain name <targetshopping.com> fully incorporates Complainant’s TARGET mark, and is nearly identical to the name of Complainant’s exclusive licensee, Target Stores. Respondent’s domain name is otherwise identical to Complainant’s TARGET mark except for the use of the generic word “shopping.” The use of the suffix “shopping” is an irrelevant distinction, which does not change the likelihood of confusion. See Kabushiki Kaisha Toshiba v. Distribution Purchasing & Logistics Corp., D2000-0464 (WIPO July 27, 2000) (finding <toshibastore.com> confusingly similar to the TOSHIBA mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).
11. Given the nearly identical nature of <targetshopping.com> to TARGET®, the domain name is confusingly similar to Complainant’s mark.
12. Upon information and belief, Respondent has no trademark or intellectual property rights in the domain name <targetshopping.com>. Respondent is not, and has never been, a licensee of Complainant or its predecessors in interest. At the time Respondent registered the domain name, the TARGET mark was sufficiently distinctive or famous to give constructive notice to Respondent that the registration of domain names at issue would violate Complainant’s rights. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at time of registration); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with Complainant”).
13. Upon information and belief, Respondent is not commonly known as <targetshopping.com>. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in the domain name when Respondent is not known by the mark).
14. Upon information and belief, Respondent is not using the domain name in connection with the bona fide offering of goods and services. When an Internet user inputs the domain name <targetshopping.com>, the user is immediately transferred to a website that features advertising and links to a variety of shopping sites such as <gotoys.ca>, <famousgolfcourses.com>, <transponderbypass.com> and <12voltshop.com> selling a variety of goods and services including toys, among other products and services one might expect to be sold at Target. Misdirecting consumers through the use of Complainant’s mark does not qualify as a bona fide offering of goods and services under Policy ¶ 4(c)(i). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant’s site to a competing website); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
15. Respondent is not making any legitimate noncommercial or fair use of the domain name <targetshopping.com>. See Alta Vista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that using the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).
16. Under these circumstances, Respondent lacks any valid rights or legitimate interests in the domain name.
Bad Faith Registration and Use of Domain Name
17. Respondent registered and used the domain name <targetshopping.com> after the TARGET mark was already distinctive and famous. Complainant has not authorized or had control over Respondent’s use of the domain name <targetshopping.com> or any activities associated with the domain names.
18. Respondent registered the domain name <targetshopping.com> to divert Internet users to a website featuring advertisements and links to websites offering goods and services in direct competition with Target’s goods and services. Respondent is capitalizing on the confusing similarity between <targetshopping.com> and the TARGET® mark to redirect users to its website. Such actions constitute bad faith. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where Respondent’s site pass users through to Respondent’s competing business); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain name).
19. In light of these circumstances, Respondent has registered and used the domain name <targetshopping.com> in bad faith under Policy ¶ 4(b).
20. Respondent’s bad faith registration and use of the domain name <targetshopping.com> meet the standards for transfer of the domain name to Complainant under the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C.A. §1125(d)(1)(A).
B. RespondentAs is set out in more detail below, it is Respondent’s submission that the disputed domain name, <targetshopping.com>, is not confusingly similar to Complainant’s registered trademarks TARGET or TARGET & Bullseye Design (collectively, the “Complainant’s Trademarks”). Further, Respondent submits that it is entitled to use the trade-name TARGET SHOPPING and has a legitimate interest in the Internet domain name <targetshopping.com> and that the use and registration of this domain name has been fair use and made in good faith.
Respondent is an Internet website design, development and marketing business, operating as Kaplunk <kaplunk.com>. Respondent operates an electronic commerce order processing service for on-line businesses. This service is named TargetShopping.com, and is hosted at <targetshopping.com>. There is a public website at this Internet address, which is simply a splash page having links to the partners of the TargetShopping.com service. There is also a secure Internet portal hosted at <targetshopping.com> that allows its partners to use the TargetShopping.com service and manage electronic commerce orders. This order service was first developed in 1999 by Trilogix Electronic Systems Inc. (“Trilogix”) for its own on-line store. In 2001, the TargetShopping.com service and related domain name was transferred to Respondent, in order to continue the order processing service for Trilogix, and to also offer the TargetShopping.com service to others.
For reasons developed below, Respondent submits that the Administrative Panel would be justified in denying the remedy requested by Complainant.
[a.] The Disputed Domain Name is Not Confusingly Similar to Complainant’s Trademarks. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
Complainant’s Trademarks are Weakly Distinctive
Complainant takes the position that “the TARGET mark is a famous mark as defined in 15 U.S.C. §1125(c).” Complainant has furnished copies of United States Trademark Registration No. 845,193 for the trademark TARGET and United States Trademark Registration No. 1,386,186 for the trademark TARGET & BULLSEYE Design, used in association with inter alia retail department store services.
Complainant also refers to United States Trademark application no. 76/418,297 TARGET and Application No. 76/418,296 TARGET & BULLSEYE Design used in association with on-line services. The particulars of the on-line services have not been given, nor have copies of these documents been provided. It is respectfully submitted that, given the absence of the particulars for on-line services, Complainant’s claimed trademark rights for on-line services should be disregarded, being vague and unsubstantiated.
15 U.S.C. §1125(c) provides that, when determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to:
(a) the degree of inherent or acquired distinctiveness of the mark;
(b) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(c) the duration and extent of advertising and publicity of the mark;
(d) the geographical extent of the trading area in which the mark is used;
(e) the channels of trade for the goods or services with which the mark is used;
(f) the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought;
(h) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.Complainant, however, has not furnished any evidence to support the claimed fame or notoriety associated with its TARGET trademark. There is no evidence to measure against the criteria set out in 15 U.S.C. §1125(c) and Complainant has not established that its TARGET trademark is famous, and that under trademark law it is entitled to the special protections against dilution or the loss of distinctiveness of its TARGET trademark.
In particular, Complainant has not provided evidence as to the specific goods and services that Complainant’s TARGET trademark is famous for. There is no evidence showing the high degree of recognition associated with Complainant’s trademark. No third party references or citations regarding the fame of this mark, as one would expect, have been furnished in support of this bare claim. Indeed, Complainant has not indicated the number of unique hits that its claimed Internet website <target.com> receives on a daily basis, or furnished evidence showing the use of its TARGET trademark on that website or even provided a “WHOis” record indicating its ownership of that Internet domain.
The term “target,” being an ordinary dictionary word, is commonly used in trademarks and Internet domain names. For example, in the United States, Complainant’s Trademarks co-exist on the United States Patent and Trademarks Register with the following trademark registrations:
AUTOTARGET.COM 2,474,947 and AUTO TARGET 2,478,993 registered to Jill Nachimi in association with inter alia computerized on-line ordering of motor vehicles, namely automobiles.
TARGET SPORTS 2,634,526 registered to Target Sports, Inc. in association with Mail order services and on-line retail store services featuring firearm parts and accessories. Respondent notes that Complainant’s website at <target.com> has section dedicated to sports equipment.These registrations co-exist on the United States Patent and Trademarks Register with Complainant’s marks. Clearly, Complainant does not have the right to the exclusive use of the word TARGET in association with on-line shopping.
Other marks incorporating the word “target” are registered with the Canadian Intellectual Property Office, including Target, Target Convenience Food Stores, Target Food, Target Electronics and Target Liquor.
There are multiple co-existing trademark registrations, owned by different entities, for trademarks comprised of the word TARGET and in some cases a descriptive word. Each of the registrations set out above are all associated with sales, whether on-line or through traditional “brick and mortar” stores.
Respondent respectfully submits that on a preponderance of the evidence Complainant’s TARGET trademarks are weakly distinctive and entitled to only a narrow ambit of protection.
Complainant argues that “[t]he use of the suffix ‘shopping’ is an irrelevant distinction, which does not change the likelihood of confusion.” In support, Complainant references previous UDRP decisions Kabushiki Kaisha Toshiba v. Distribution Purchasing and Logistics Corp., D2000-0464 (WIPO July 27, 2000) (finding <toshibastore.com> confusingly similar with TOSHIBA mark) and Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (domain name in dispute contains the identical mark of Complainant combined with a generic word or term). The Policy and the Rules do not provide that an Administrative Panel is bound by or required to follow precedent. See Tata Sons Ltd. v. Solanki D2001-0974 (WIPO Sept. 25, 2001).
Given the weak distinctiveness of the TARGET trademark as set out above, it is respectfully submitted that the word “shopping” in the domain name at issue is a very relevant consideration in any determination of confusingly similar under Policy ¶ 4(a).
Respondent submits that the word “shopping” readily differentiates the disputed domain name from Complainant’s TARGET trademark. The trademarks TARGET, TARGET FOODS STORES and TARGET LIQUOR are not confusing in Canada, owing in part to the small differences in the respective marks. Further, the trademarks TARGETSPORTS and TARGETSPORTS.COM co-exist on the United States Patent and Trademarks Register with Complainant’s Trademarks, also indicating that small differences between respective trademarks are sufficient to avoid confusion. Further, Complainant has not provided any evidence to show that its TARGET trademarks are famous, and warrants the support of a broader scope of protection in any assessment of confusingly similar.
It is submitted that Complainant’s TARGET trademarks and the dominant features of <targetshopping.com>, namely TARGET SHOPPING, are visually distinct, different in sound, appearance, and suggested idea. The phrase TARGET SHOPPING, characterized by two descriptive words, suggests “purchasing goals.” The word TARGET on its own, such as Complainant’s trademark, suggests the idea of “a mark to be hit.”
Further, Respondent notes that Complainant’s assertions that any use of the Domain Name by another party would likely mislead or deceive Complainant’s customers, without evidence, is not persuasive. See Capt‘n Snooze Mgmt. Pty. Ltd. v. Domains 4 Sale, D2000-0488 (WIPO July 10, 2000).
For these reasons, Respondent respectfully submits that the disputed domain name is not confusingly similar to Complainant’s Trademarks. It is respectfully submitted that Complainant has failed to meet the requirements of Policy ¶ 4(a)(i) and accordingly the Complaint against Respondent should be dismissed.
[b.] Respondent Has Rights and a Legitimate Interest in the Disputed Domain Name. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
The Internet domain name <targetshopping.com> was registered in 1999 by Derek Schumann, President of Trilogix Electronic Systems, Inc. for use in association with electronic commerce opportunities associated with his business Trilogix. This Internet domain name was chosen as a combination of two descriptive dictionary words, being suggestive of “purchasing goals.”
The in-house web development team at Trilogix was unable to identify a satisfactory existing electronic commerce program that would manage online purchases and the related shipping, payment and accounts. Trilogix therefore developed and reformed its own proprietary electronic commerce “shopping-basket” service which is now TargetShopping.com. This service was created and enhanced by Trilogix with the ultimate aim of providing the service to third parties for sales and marketing activities. The trade name TARGET SHOPPING was registered to Trilogix on November 13, 2001.
The Trilogix TargetShopping.com service and Trilogix web development business was subsequently spun off into its own legal entity, being Respondent. Respondent is an Internet website design and development company, doing business as Kaplunk. Kaplunk is a registered business name of Respondent. A Business License was issued on August 26, 2003 to Respondent.
Respondent Kaplunk provides the TargetShopping.com electronic commerce service for retailers such as <12voltshop.com>, <famousgolfcourses.com>, <gotoys.ca> and <transponderbypass.com>. Each of these businesses operate their own branded websites. TargetShopping.com provides the “checkout” service for consumers, and the secure web-based interface at <targetshopping.com> for the business to manage its electronic commerce orders, shipping and payment.
Kaplunk is a successful ongoing concern, generating a large portion of its revenues from the TargetShopping.com service. Since the purpose is to enable businesses to easily manage electronic commerce, the TargetShopping.com service is not directly marketed to individual consumers.
In response to Complainant’s allegations, Respondent denies that it had actual or constructive notice on the basis that Complainant’s TARGET trademark was sufficiently distinctive or famous, that the registration of the Internet domain name <targetshopping.com> would violate Complainant’s rights. As set out above, Complainant is not the exclusive source of TARGET services for retail or wholesale sales, in Canada or for on-line sales in the United States.
Respondent is using the Internet domain name <targetshopping.com> in association with the bona fide performance of services. The Internet domain provides secure Internet access to its clients to manage the purchases, shipping and payment of orders made on its clients’ Internet websites.
Respondent submits that Complainant’s allegation that Respondent is misdirecting consumers, in contravention of Policy ¶ 4(c)(i) is unfounded. Respondent specifically denies that it is misdirecting consumers through the use of Complainant’s mark. The hyperlinks to websites displayed on the splash screen and public website for <targetshopping.com> are links to the TargetShopping.com client websites. Further, at the <targetshopping.com> website, no goods are offered, advertised or performed as it is not a retail sales website. Instead, <targetshopping.com> is an order-processing service provider for businesses to manage sales and marketing activities.
Respondent submits that its use of the Internet domain name <targetshopping.com> is fair use, made in good faith. As stated earlier, this domain name suggests the idea of “purchasing goals,” which is of interest to businesses seeking an electronic commerce ordering and payment solution. The website and business hosted at the <targetshopping.com> domain name relates to the management of sales and marketing activities for on-line transactions. Respondent is not seeking to divert customers seeking Complainant’s trademark. Respondent and Trilogix have no knowledge of any actual confusion of the Internet domain name <targetshopping.com> with Complainant.
Further, before any notice to Respondent of the dispute, Respondent’s use of the Internet domain name <targetshopping.com> corresponded to a registered trade-name (“Target Shopping” registered to the previous owner Trilogix). Further Respondent submits that through its bona fide offering and performance of services to third parties, it has also developed common law trademark rights in TargetShopping.com.
For these reasons, Respondent respectfully submits that it has valid rights and a legitimate interest to the Internet domain name <targetshopping.com>. It is respectfully submitted that Complainant has failed to meet the requirements of Policy ¶ 4(a)(ii) and accordingly the Complaint against Respondent should be dismissed.
[c.] The Disputed Domain Has Been Registered in Good Faith with Fair Use. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
The Internet domain name <targetshopping.com> was registered in 1999 by Derek Schumann, the principle of Trilogix and also of Respondent Kaplunk. The domain name was registered as the words “target” and “shopping” are apt and descriptive of services that are directed towards electronic commerce. There is both a public website and secure client website hosted at this Internet domain.
The public website of <targetshopping.com> is used simply as a splash page having links to businesses that use the Target Shopping e-commerce shopping order-processing service. The logos shown for the businesses 12VOLTSHOP.COM, GOTOYS.CA, TRASPONDERBYPASS.COM, SHOP12VOLTS.COM and FAMOUSGOLFCOURSES.COM all provide hyperlinks to those e-commerce websites, each of which use the TargetShopping.com e-commerce management service. Recently, the business at GO TOYS located at <gotoys.ca> has been closed. This link has been removed from the <targetshopping.com> website. The splash page describes these as “Partner Sites.”
The secure website at <targetshopping.com> provides an administration interface for clients of Target Shopping. The administration interface allows clients to manage orders, product returns, set dollar exchange rates, calculate shipping costs, invoice, and manage payments.
In support of these submissions, Respondent submitted further exhibits to verify its assertions.
Further, Respondent states that:
(i) Respondent has not registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and that Respondent has not engaged in a pattern of such conduct; or
(ii) Respondent has not registered the domain name primarily for the purpose of disrupting the business of a competitor; and
(iii) by using the domain name, Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Respondent has registered and is using the Internet domain name <targetshopping.com> in good faith with fair use. It is respectfully submitted that Complainant has failed to meet the requirements of Policy ¶ 4(a)(iii) and accordingly the Complaint against Respondent should be dismissed.
Respondent further submits that Complainant is required to substantiate its Complaint in order to sufficiently make out a case. If in the light of the statements and documents presented doubts remain, the Complaint cannot be allowed. See Formula One Licensing BV v. Formula One Internet, D2000-0193 (WIPO May 28, 2000). For the reasons set out above, it is respectfully submitted that the Panel would be justified in refusing the Complaint under Policy ¶¶¶ 4(a)(i), (ii) and/or (iii).
C. Additional Submissions
Both parties submitted additional material about the extent, time and scope of various trademark registrations in the United States and Canada.
The Panel finds:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name was not registered and used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant is a wholly owned subsidiary of Target Corporation and is responsible for protection of brands it owns and licenses to Target Corporation and its various divisions. Complainant holds several registrations with the U.S. Patent and Trademark Office (“USPTO”) for the TARGET mark, including Reg. Nos. 845,193 and 1,386,318 (registered on February 27, 1968 and March 11, 1986, respectively). The first registration, Reg. No. 845,193, is registered under the name Target Stores Inc. and was ultimately assigned to Complainant on January 28, 2000. The second registration Reg. No. 1,386,318 is registered under the name Dayton-Hudson Corp. d/b/a Target and was also ultimately assigned to Complainant on January 28, 2000. Complainant’s copy of the 1,386,318 registration documentation shows that the TARGET mark has been used in commerce since 1965. Complainant has established rights in the TARGET mark. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Furthermore, the <targetshopping.com> domain name is confusingly similar to the TARGET mark because the domain name fully incorporates the mark and merely adds the descriptive term “shopping” and the generic top-level domain “.com” to the mark. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLAR DESIGN because “[t]he idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain names are manufactured by or sold by Complainant or one of Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word CATERPILLAR”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).
Respondent “operates an electronic commerce order processing service for on-line businesses” under the name TargetShopping.com and is hosted at the <targetshopping.com> domain name. Moreover, the website at the <targetshopping.com> domain name provides links to the partners of TargetShopping.com and provides a secure Internet portal that allows its partners to use the domain name to manage electronic commerce orders. Respondent has rights and legitimate interests in the <targetshopping.com> domain name because it is using the domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name); see also Canned Foods Inc. v. Ult.Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that Respondent was making a bona fide offering of goods or services with the disputed domain name). Respondent’s predecessor registered “target shopping” on November 13, 2001 with the Ministry of Ontario and this pre-dates the June 7, 2002 filing date for Complainant’s on-line store trademark registrations with the United States Patent and Trademark Office. Given some of the omitted information (by both sides), this Panel assumes the filing was transferred to Respondent when it was established. Respondent is also known as Target Shopping.com on its credit card merchant accounts. This appears to satisfy Policy ¶ 4(c)(ii).
The Panel feels compelled to comment on Complainant’s delay in bringing this action. The <targetshopping.com> domain name was registered in 1999. Complainant waited roughly four years to bring this proceeding. This is troubling. A party does not normally slumber on its rights and the Panel does not know why Complainant waited so long to protect its rights. In the meantime, Respondent established its business (see Policy ¶ 4(c)(i)). There was no showing Complainant contacted Respondent before Respondent spent substantial effort in designing and implementing an e-commerce portal. While the <targetshopping.com> domain name public website was merely serving as a splash page to redirect traffic to five other websites, there was a significant private e-commerce website located at this domain name.
While Complainant’s mark is certainly famous to this Panelist, that is not a factor to be specifically considered under the ICANN procedures.
Respondent did not register or use the <targetshopping.com> domain name in bad faith because it uses the domain name to make a bona fide offering of goods or services and thus has rights and legitimate interests in the domain name. See MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (Panelist David Sorkin, dissenting) (finding that Respondent’s reasonable belief in its legitimate right to register the disputed domain name precluded a finding of bad faith registration); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business).
Respondent did not register or use the <targetshopping.com> domain name in order to sell it for profit, to compete with Complainant, or to prevent Complainant from reflecting its mark in a corresponding domain name. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where Respondent has not attempted to sell domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complaint seeking to disrupt Complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered
Dated: Friday, March 8, 2004