9th Jul 2004
Target Brands, Inc. v. Eastwind Group
Claim Number: FA0405000267475
Complainant is Target Brands, Inc. (“Complainant”), represented by Jodi A. DeSchane, of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN 55402.Respondent is Eastwind Group (“Respondent”), represented by Ari Goldberger of ESQwire.com, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <target.org>, registered with 123 Easy Domain Names d/b/a Signature Domains, Inc.
The undersigned Panelist Steven L. Schwartz certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 30, 2004; the Forum received a hard copy of the Complaint on May 3, 2004.
On May 6, 2004, 123 Easy Domain Names d/b/a Signature Domains, Inc. confirmed by e-mail to the Forum that the domain name <target.org> is registered with 123 Easy Domain Names d/b/a Signature Domains, Inc. and that Respondent is the current registrant of the name.123 Easy Domain Names d/b/a Signature Domains, Inc. has verified that Respondent is bound by the 123 Easy Domain Names d/b/a Signature Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 14, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on June 14, 2004.
A timely Additional Submission was received and determined to be complete on June 21, 2004 from Complainant.
On June 24, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Steven L. Schwartz as Panelist.
An Additional Submission in reply to Complainant’s Additional Submission was received by email on June 29, 2004.The Forum determined that this additional submission was not in compliance with Supplemental Rule #7.With the exception of additional case citations, no significant new material was included in Respondent’s additional submission. The Panel finds that Complainant will not be prejudiced by accepting this Additional Submission.Therefore, Respondent’s Additional Submission is accepted into the record.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A.Complainant makes the following contentions:
Background of Claim
1. Complainant Target Brands, Inc. is a wholly owned subsidiary of Target Corporation, and is responsible for protection of brands it owns and licenses to Target Corporation and its various divisions.
2. The Target Stores division of Target Corporation (“Target”), a licensee of Complainant, has since 1962 operated a chain of TARGET® retail discount department stores, now numbering more than 1,100 stores in 47 states.
3. Over the years, Target, TARGET® stores, and Target’s other commercial undertakings have developed a national reputation for quality, and value.Target asserts that this is a well-deserved and hard-earned reputation and is reflected in a substantial and valuable body of goodwill symbolized by the well-known TARGET mark (or “mark”).
4. The TARGET mark is represented to be a commercial icon that has for many years been extensively used and advertised. As a result, TARGET asserts that its mark enjoys an extremely high degree of recognition with the public in the United States and is a famous mark as defined in 15 U.S.C. § 1125(c).
5. Complainant holds numerous valid United States registrations for the mark TARGET including United States Trademark Registration No. 845,193, registered February 27, 1968, and for the mark TARGET and the Bullseye design, U.S. Trademark Registration No. 1,386,318, both for use in connection with, among other things, retail department store sales services.
6. Target is active in electronic commerce, operating an informational and on-line shopping site at www.target.com. To connect with Target’s website at <target.com>, an Internet user types “www.target.com.”If the user has more sophisticated software, the user may simply type “target.com,” the domain name associated with Target’s website.
7. Complainant asserts that as a result of, among other things, Target’s continuous use and extensive advertising promotion, including nationwide television campaigns, the TARGET mark is known, among other places, throughout the United States as identifying Complainant’s exclusive licensee as a source of quality retail services.
8. Finally, it is claimed that TARGET mark is the highly distinctive and of great and incalculable value to Complainant.Complainant closely controls the use and reproduction of the TARGET mark to ensure that all of Target Stores’ current and potential customers can rely upon the mark as a symbol of high quality products and services.
Similarity of the Domain Name to Complainant’s Trademarks
9. Complainant asserts that the domain name target.org> is identical to Complainant’s TARGET mark and merely adds a top-level indicator ".org."It has been established that addition of a top-level indicator such as ".com" or ".org" does not defeat a claim of confusing similarity. See, Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks); see also, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
10. Given the identical nature of target.org> to TARGET®, the domain name is identical to Complainant’s mark.
Absence of Trademark Rights in Respondent
11. Complainant believes that Respondent has no trademark or intellectual property rights in the domain name target.org>.Respondent is not, and has never been, a licensee of Complainant or its predecessors in interest.At the time Respondent registered the domain name, the TARGET mark was sufficiently distinctive or famous to give constructive notice to Respondent that the registration of domain names at issue would violate Complainant’s rights. Samsonite Corp. v. Colony Holding, FA 94313 (NAF April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at time of registration); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
12. Complainant also believes that Respondent is not commonly known as target.org>. Gallup, Inc. v. Amish Country Store, FA 96209 (NAF Jan. 23, 2001) (finding that Respondent does not have rights in the domain name when Respondent is not known by the mark).
13. Complainant contacted Respondent by letter dated August 10, 2001 after learning of Respondent’s registration of the target.org> domain name.Because, to the best of Complainant’s knowledge, Respondent had not begun using the domain name, Complainant took no further action at that time.
14. However, Complainant continued to monitor the use of the target.org> domain name. Complainant believes that between April 28, 2003 and December 15, 2003 Respondent had used the target.org> domain name to direct users to a website at xxxweb.com, featuring sexually explicit images.It also believes that after Respondent stopped directing users to xxxweb.com, it began using the target.org> domain name to direct users to a search engine that offers links to shopping sites, selling products one might expect to be sold at TARGET® Stores or at target.com.
15. Complainant again contacted Respondent by letter dated February 9, 2004 advising Respondent that its use of TARGET in association with “adult” content is inconsistent with the image and goodwill that have been built in Complainant’s TARGET mark and is likely to tarnish Complainant’s mark.In addition, Respondent was informed that its use of TARGET to link users to shopping sites is likely to confuse or mislead consumers.Complainant requested that Respondent cease and desist from using the target.org> domain name. According to Complainant, Respondent did not respond, therefore, it filed this action.
16. Respondent is not using the domain name in connection with the bona fide offering of goods and services.Respondent did not initially use the domain name at all after registration in 1991.Upon information and belief, when Respondent began using the target.org> domain name it was in association with posting pornographic content.MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).Currently, when an Internet user inputs thetarget.org> domain name, the user is immediately transferred to a search engine. Such use, it is contended, is also not a bona fide offering of goods and services.
17. Respondent is not making any legitimate noncommercial or fair use of the target.org> domain name.Alta Vista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that using the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).In particular, Respondent’s current use of the domain name to direct users to a website that offers a search engine to link users to a variety of websites, including shopping sites offering the same type of goods available at TARGET® stores and available on-line at <target.com> does not establish rights or legitimate interests.Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant’s site to a competing website); Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (NAF Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
18. Complainant maintains that under these circumstances, Respondent lacks any valid rights or legitimate interests in the domain name.
Bad Faith Registration and Use of Domain Name
19. Complainant asserts that at the time Respondent registered the target.org> domain name, the TARGET mark was sufficiently distinctive or famous to give constructive notice to Respondent that the registration of target.org>
would violate Complainant’s rights.Moreover, before Respondent began use of the target.org> domain name, it had actual knowledge that such use could violate Complainant’s valuable trademark rights. Samsonite Corp. v. Colony Holding, FA 94313 (NAF April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at time of registration); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
20. Complainant has not authorized or had control over Respondent’s use of the target.org> domain name or any activities associated with the domain name.
21. Respondent’s use of the target.org>
domain name to display pornographic material is evidence of bad faith. Hewlett-Packard Company v. Russx Casting Company, FA 99709 (NAF October 22, 2001); MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic web site can constitute bad faith); CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).Respondent’s use of a domain name that is identical to the TARGET mark is also likely to dilute said mark by associating the TARGET mark with pornographic images that tarnish the family-oriented goodwill associated with the TARGET mark.
22. Complainant claims that Respondent is currently using the target.org> domain name to divert Internet traffic to a website that offers a search engine and links to other websites featuring goods and services in direct competition with Complainant’s goods and services.Respondent is capitalizing on the confusing similarity between target.org> and the TARGET® mark to redirect users to a website unconnected to Complainant. Such actions also constitute bad faith.EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (NAF July 7, 2000) (finding bad faith where Respondent’s site pass users through to Respondent’s competing business);Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain name). Furthermore, an Internet user who inadvertently arrives at Respondent’s site by typingtarget.org> into a web browser instead of <target.com> might utilize the services at Respondent’s site instead of continuing a search for Complainant’s goods and services, or assume that Complainant endorses or sponsors the target.org> site.
23. Respondent’s use of a domain name that is nearly identical to Complainant’s mark is likely to cause confusion or cause the public to mistakenly believe that Complainant in some way authorized, sponsored, approved or endorsed Respondent’s activities related to the domain name or that Complainant is in some way affiliated with Respondent’s activities.
24. In light of these circumstances, Respondent has registered and used the target.org> domain name in bad faith under ICANN Policy ¶ 4(b).
25. Respondent’s bad faith registration and use of the target.org> domain name meet the standards for transfer of the domain names to Complainant under the Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C.A. §1125(d)(1)(A).
B. Respondent makes the following contentions:
Background of Response
1. The disputed domain is composed solely of the common word “target,” which is a common word in the English dictionary meaning, among other things, “an object, such as a padded disk with a marked surface, that is shot at to test accuracy in rifle or archery practice.”
2. Respondent registered the disputed domain because it was available for anyone to register and incorporated a common word.
3. The common word “target” is subject to substantial third party use unrelated to Complainant.An advanced Google.com search for the term “target” excluding <target.org> and “store,” to eliminate references to Complainant, yielded 14.5 million results.The word “target” relates to the sport of archery, which involves a bow and arrow and a “target.”The word “target” is also used in the English language to refer to a desired goal or objective.
4. Respondent uses the disputed domain in connection with an affiliate advertising program with Overture.com, Inc., which posts links related to the word “target.”Links appear at the website located at <target.org>, which relate to target practice, hunting, archery, and other sports equipment. The links on Respondent’s website are auto-generated by Overture.com, using a sophisticated system that provides links relevant to the dictionary meaning of the word target.These links include goal, goal setting, personal goal, career goal, hinting equipment, hunting gear and other sports-related and goal related links which are prominently displayed on Respondent’s website.Respondent maintains that such use of a website to provide generic links can support the Respondent’s legitimate interest.Williams, Babbitt & Weisman, Inc. v. Ultimate Search, No. 98813 (NAF Oct. 8, 2001)
5. Respondent contends that Complainant has mislead the Panel by alleging in paragraphs 22-24 of the Complaint that “Respondent began using the domain name target.org in association with posting pornographic content” at a website known as xxxweb.com.In actuality, this domain name has always been used in connection with advertising links. The disputed domain never directly led to an adult web page.The web page has contained one link, among dozens of other links and advertisements, denoted “Adult Content Over 18 Only,” which, if clicked, led to a warning page promoting a third-party website located at xxxweb.com. Respondent claims that this was only a link and can be verified by the website http://archive.org which contains an historic archive of content posted at websites.At some point in late 2003 early 2004, the adult link was removed.Prior to April 2003, <target.org> was pointed to general advertising site with no adult link as evidenced by archived web page of <target.org> for May 25, 2002.There was no adult link at or around the time the Complaint was initiated, having been removed several months prior.
6. Respondent maintains that it did not register the disputed domain for the purpose of selling it to Complainant.Respondent has never offered to sell any domain name.
7. Respondent also maintains that it did not register the disputed domain with the intent to disrupt Complainant’s business or to confuse consumers seeking to find Complainant’s website.Respondent did not register the disputed domain to prevent Complainant from owning a domain name incorporating its alleged trademark.Respondent has never registered a domain name to prevent any trademark owner from registering a domain name incorporating a trademark.
8. Respondent asserts that under the ICANN Policy, Complainant can prevail on its claim to obtain the rights to the disputed domain, only if it is able to demonstrate three things:
1. That the disputed domain name is identical or confusingly similar to its trademark; and
2. That respondent has no rights or legitimate interest in the domain name; and
3. The domain name was registered and is being used in bad faith.
(Policy, ¶¶ 4(a)(i)-(iii).)Complainant bears the burden of proof as to each element of its claim.(Policy ¶ 4(a).)Respondent maintains that Complainant cannot and has not met this burden.
Similarity of the Domain Name to Complainant’s Trademarks
And Absence of Trademark Rights in Respondent
9. Respondent does not dispute that disputed domain and Complainant’s common word trademark are identical.
10. Respondent contends, however, that this issue need not be reviewed because Complainant has failed to meet its burden of proving that Respondent lacks a legitimate interest in the disputed domain, or that it registered or has used it in bad faith and, therefore, the Complaint must fail regardless of the likeness of the disputed domain and Complainant’s trademark.
Respondent Has Rights and a Legitimate Interest In The Domain Name
11. Respondent asserts that Complainant failed to prove the second element--that Respondent has no rights or legitimate interest in the name. Respondent points to Paragraph 4(c) of the Policy where three circumstances are listed that can demonstrate a registrant’s rights or legitimate interest in the disputed domain name:
(a) Before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(b) You (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;
(c) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.
(Policy ¶ 4(c)(i) - (iii).)
Respondent contends that because TARGET is a common word, and appears on over 7.5 million third party web pages wholly unrelated to Complainant, and is not exclusively used by Complainant, Respondent, ipso facto, has rights and a legitimate interest in the disputed domain. Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (YOURENERGYSOURCE.COM) (finding that Respondent has rights and legitimate interests in the domain name where “[r]espondent has persuasively shown that the domain name is comprised of generic and/or common words, and, in any event, is not exclusively associated with Complainant’s business”)
12. Respondent states that prior to the initiation of this dispute, Respondent has used the disputed domain in connection with Internet advertising that specifically relates to the literal meaning of the word “target,” which is defined as “an object, such as a padded disk with a marked surface, that is shot at to test accuracy in rife or archery practice.” Examples of the relevant advertisements on Respondent’s website are links related to hunting, fishing, outdoor recreation, and sporting goods.These relevant links appear presently, and have appeared on Respondent’s website for well over a year prior to initiation of this dispute.
13. Respondent maintains that the use of a common word domain name in connection with third party advertising services related to the descriptive meaning of the domain name constitutes use in connection with a bona fide offering of goods or services, pursuant to paragraph 4(c)(i).Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., No. D2001-0031 (WIPO Apr. 13, 2001) (pointing sweeps.com to Overture.com (then known as Goto.com) links related to sweepstakes established legitimate interest).
No Bad Faith Registration Or Use Of Domain Name
14. Respondent asserts that no bad faith registration and use can be demonstrated by Complainant and points to the ICANN Policy that identifies four circumstances that may constitute evidence of bad faith registration and use:
(a) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(b) You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(c) You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
(Policy ¶¶ 4(b)(i) - (iv).)
Respondent contends that there is no evidence that it registered the disputed domain in bad faith or was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights.
15. Respondent states that it has not attempted to improperly lure and confuse users looking for information on Complainant’s services. Where a complainant’s mark is a common word with substantial third party use, as it is here, the complainant must proffer evidence that demonstrates that respondent has specifically intended to confuse consumers seeking out complainant.There is no such proof here.
16. At no time did the web page at <target.org> link directly to an adult website.The link which contained a warning of adult content led to another warning page.Only if the user clicked the link on the warning page would it be taken to a third-party site offering pornography.Nothing under the Policy holds that such a link constitutes bad faith.In any event, the adult content was not present at, or before, the time the Complaint was initiated – and there is no allegation that it was present at that time.Respondent argues that Complainant admits in its Complaint (attachment) that the adult link did “not appear on the website as of the date of th[e] letter.”In any event, it is further contended, the adult link was removed by Respondent independent of any notice from Complainant of a pending dispute.
The Panel finds Complainant has proven the following element:
(1)The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel finds Complainant has failed to prove either of the following essential elements:
(2)The Respondent has no rights or legitimate interests in respect of the domain name; and
(3)The domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1)The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2)The Respondent has no rights or legitimate interests in respect of the domain name; and
(3)The domain name has been registered and is being used in bad faith.
Application of the above ICANN Policy will not be made to the facts of and law of this case:
Identical and/or Confusingly Similar
Complainant asserts that it has established rights in the TARGET mark and the Bullseye design through numerous registrations with the United States Patent and Trademark Office (Reg. No. 845,193 issued February 27, 1968, Reg. No. 1,386,318 issued March 11, 1986, Reg. 2,793,901 issued December 16, 2003 and Reg. No. 2,755,538 issued August 26, 2003).Moreover, Complainant states that it has used the mark in commerce since 1962.Men’s Wearhouse, Inc. v. Wick, FA 117861 (NAF Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.Respondent has the burden of refuting this assumption).
Complainant avers that the disputed domain name is identical to Complainant’s TARGET mark because the domain name fully incorporates the mark and merely adds the generic top-level domain name (“gTLD”) “.org.”Complainant argues that the addition of the gTLD is insufficient to distinguish the domain name from the Complainant’s mark.See Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.org> is confusingly similar to Complainant’s marks, where Complainant holds many trademarks that contain the term “LEAFS”); Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to Complainant’s mark); BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to Complainant’s well-known and registered BMW trademarks).
In determining whether the domain name and the TARGET mark are "confusingly similar", recent federal court decisions guide the Panel to the conclusion that confusing similarity should be determined by comparing the mark and domain name alone, independent of the other marketing and use factors usually considered in a traditional infringement action. See, e.g., Northern Light Technology, Inc. v. Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar. 31, 2000). In this case, Respondent admits that the disputed domain name and Complainant’s trademark are identical.
Therefore, because the Complainant’s mark and the domain name are identical, the first factor is met.
Rights or Legitimate Interests
Respondent asserts that it has rights in the domain name because Complainant’s mark is generic.The Panel determines that “target” is a generic term and a common word.Target Software Solution GmbH v. Net Virtue, Inc., No DBIZ20020277 (WIPO August 19, 2002) Complainant does not have monopoly over any domain name with the word “target” in it. Target Brands, Inc. v. A:Dnet Media Group and Edward Harrison, FA 227647 (NAF March 24, 2004)The Panel finds that Respondent has rights to and legitimate interests in a domain name that consists of a generic or common term.Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); Choice Courier Sys. Inc. v. Kirkendale, D2002-0483 (WIPO July 23, 2002) (stating that “there is no requirement that the user of a domain name must offer goods or services bearing a mark which matches the domain name. This is particularly so when the mark is a generic word.”); SOCCERPLEX, INC. v. NBA Inc., FA 94361 (NAF May 25, 2000) (finding that Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business).
Additionally, where a domain name is generic, the first person to register it in good faith is entitled to the domain name and this is considered a “legitimate interest.” Target Sopftware Solution GmbH v. NetVirtue, Inc., No. DBIZ2002-0277 (WIPO Aug. 19, 2002); CRS Technology Corporation v. CondeNet, FA 93547 (Nat. Arb. Forum Mar. 28, 2000); Coming Attractions v.ComingAttractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000).
Furthermore, Respondent contends that it has rights and legitimate interests in the domain name because the domain name describes Respondent’s business offerings.The Panel determines that Respondent’s business is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).Energy Source Inc. v. Your Energy Source, FA 96364 (NAF Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); Canned Foods Inc. v. Ult. Search Inc., FA 96320 (NAF Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that Respondent was making a bona fide offering of goods or services with the disputed domain name.).
Finally, Respondent has offered persuasive evidence that it uses the disputed domain in connection with an affiliate advertising program with Overture.com, Inc., which posts links related to the word “target.”Links appear at the website located at <target.org>, which relate to target practice, hunting, archery, and other sports equipment. Respondent explains that the links on website are auto-generated by Overture.com, using a sophisticated system that provides links relevant to the dictionary meaning of the word target.These links also include goal, goal setting, personal goal, career goal, hinting equipment, hunting gear and other sports-related and goal related links which are prominently displayed on Respondent’s website.This use of a website to provide generic links can support the Respondent’s legitimate interest. Williams, Babbitt & Weisman, Inc. v. Ultimate Search, No. 98813 (NAF Oct. 8, 2001) The operation of a portal website in this manner is a legitimate interest.First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest); Modern Props, Inc. v. Wallis, FA 152458 (NAF June 2, 2003)
In conclusion, the Panel determines that Respondent has legitimate rights and interests in the domain name.
Registration and Use in Bad Faith
Respondent argues that Complainant has failed to meet its burden in proving bad faith registration and use because Complainant has failed to point to particular facts and circumstances supporting its allegations.The Panel agrees.Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (NAF Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that Respondent acted in bad faith); Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from Complainant or for any other purpose prohibited by UDRP Rules); Energy Source Inc. v. Your Energy Source, FA 96364 (NAF Feb. 19, 2001) (finding that Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith and that Complainant produced no credible evidence of bad faith on the part of Respondent).
Further, Respondent states that the disputed domain name is a generic term.The Panel determines that the domain name is comprised of a generic term and finds that Respondent has not registered or used the <target.org> domain name in bad faith.Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (NAF Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that Respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”); Canned Foods Inc. v. Ult. Search Inc., FA 96320 (NAF Feb. 13, 2001) (holding that where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of Respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”).
Respondent avers that it registered the disputed domain name to display websites to promote the contextual meaning of “target,” as in “target practice.”The Panel finds that Respondent did not register or use the domain name in bad faith based on Respondent’s intent.Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); Mule Lighting, Inc. v. CPA, FA 95558 (NAF Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business); DJF Assocs., Inc. v. AIB Communications, FA 95612 (NAF Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).
In this case, there is has been no showing that the Respondent has engaged in any pattern of conduct concerning the registration of domain names and nor is there evidence of the conduct referred to as “cybersquatting.” The purpose of the ICANN policy is narrow in scope applying to clear cases of “cybersquating” and “cypberpiracy”.Shirmax retail Ltd. V. CES Marketing, Inc., Case No. AF-0104 (e-Rosolution March 20, 2000) There is, as well, no evidence of confusion in the marketplace or that Respondent has taken advantage of such confusion for its own business interests; nor is there any evidence that Respondent registered this domain name to divert customers or to try to sell this domain name to Complainant at a profit or a competitor or otherwise to interfere with Complainant’s trademark or business.Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (NAF May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).Complainant’s allegations regarding links to a pornographic site (which appear to have been limited and removed prior to commencement of this action) are insufficient to establish bad faith in this case.
There is no evidence of bad faith. Complainant has failed to establish this element.
Having established only one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Steven L. Schwartz Panelist
Dated: July 9, 2004