DECISION

Target Brands, Inc. v. Peter Carrington a/k/a Party Night Inc.

Claim Number:  FA0306000161276

PARTIES

Complainant is Target Brands, Inc., Minneapolis, MN, USA (“Complainant”) represented by Eunice P. de Carvalho, of Faegre & Benson LLP.  Respondent is Peter Carrington a/k/a Party Night, Inc., Amsterdam, NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <targetdvd.com>, registered with Key-Systems Gmbh d/b/a Domaindiscount24.Com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 30, 2003; the Forum received a hard copy of the Complaint on June 2, 2003.

On June 5, 2003, Key-Systems Gmbh d/b/a Domaindiscount24.Com confirmed by e-mail to the Forum that the domain name <targetdvd.com> is registered with Key-Systems Gmbh d/b/a Domaindiscount24.Com and that Respondent is the current registrant of the name. Key-Systems Gmbh d/b/a Domaindiscount24.Com has verified that Respondent is bound by the Key-Systems Gmbh d/b/a Domaindiscount24.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 June 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@targetdvd.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <targetdvd.com> domain name is confusingly similar to Complainant’s TARGET mark.

2. Respondent does not have any rights or legitimate interests in the <targetdvd.com> domain name.

3. Respondent registered and used the <targetdvd.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant uses the TARGET mark in relation to its retail discount department stores.  Complainant holds several trademark registrations with the U.S. Patent and Trademark Office for the well-known TARGET mark including Reg. Nos. 845,193 (registered February 27, 1968).

Complainant also operates an informational and on-line shopping site at <target.com> that markets the same products as its retail discount department stores.

Respondent registered the disputed domain name on November 18, 2002.  Respondent is using the disputed domain name to redirect Internet traffic to <hanky-panky-college.com>, an adult oriented website.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

Identical and/or Confusingly Similar

Complainant has established that it has rights in the TARGET mark through registration with the U.S. Patent and Trademark Office and through use of the mark in commerce.

Respondent’s <targetdvd.com> domain name is confusingly similar to Complainant’s TARGET mark because it merely adds the generic acronym “dvd” to the end of the mark.  Use of a generic acronym/words with Complainant’s registered mark does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity element of Policy ¶ 4(a)(i). The Panel determines that the acronym "dvd" relates to Complainant’s business because Complainant is known to sell dvd’s at its discount department stores; therefore, consumers are confused and misled when the acronym “dvd” is combined with Complainant’s mark.  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has proven its rights in the TARGET mark and asserts that Respondent lacks valid rights or legitimate interests in the disputed domain name because it incorporates Complainant’s mark.

Respondent is using the TARGET mark within its <targetdvd.com> domain name in order to redirect Internet traffic to an adult oriented website.  This use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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 third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Furthermore, there is no evidence on record that proves that Respondent is commonly known as TARGETDVD or by the <targetdvd.com> domain name.  Respondent is not affiliated with Complainant and the evidence fails to establish that Respondent is authorized or licensed to use domain names or marks containing the TARGET mark.  Therefore, Respondent has no rights or legitimate interests in the <targetdvd.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Based on the well-known nature of Complainant’s TARGET mark, it can be inferred that Respondent had knowledge of Complainant’s TARGET mark when it registered the disputed domain name.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

Furthermore, Respondent registered the <targetdvd.com> domain name, which includes the TARGET mark, and linked it to an adult oriented website.  The use of a domain name confusingly similar to a registered mark to divert Internet traffic to a website with sexually explicit content is itself evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <targetdvd.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  July 16, 2003

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