DECISION

Target Brands, Inc. v. Phayze, Inc.

Claim Number:  FA0306000161564

PARTIES

Complainant is Target Brands, Inc., Minneapolis, MN, (“Complainant”) represented by Eunice P. de Carvalho, of Faegre & Benson LLP.  Respondent is Phayze 1 Phayze 2 Phayze Inc., Paris, France (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <marshelfields.com> and <marshellfield.com>, registered with Computer Services Langenbach Gmbh Dba Joker.Com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 3, 2003; the Forum received a hard copy of the Complaint on June 5, 2003.

On June 5, 2003, Computer Services Langenbach Gmbh Dba Joker.Com confirmed by e-mail to the Forum that the domain names <marshelfields.com> and <marshellfield.com> are registered with Computer Services Langenbach Gmbh Dba Joker.Com and that Respondent is the current registrant of the names. Computer Services Langenbach Gmbh Dba Joker.Com has verified that Respondent is bound by the Computer Services Langenbach Gmbh Dba Joker.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 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 30, 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@marshelfields.comand postmaster@marshellfield.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 9, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <marshelfields.com> and <marshellfield.com> domain names are confusingly similar to Complainant’s MARSHALL FIELD’S mark.

2. Respondent does not have any rights or legitimate interests in the <marshelfields.com> and <marshellfield.com> domain names.

3. Respondent registered and used the <marshelfields.com> and <marshellfield.com> domain names in bad faith.

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

FINDINGS

Complainant, Target Brands, Inc., operates sixty-four premier department stores in eight states under the MARSHALL FIELD’S mark.  Complainant holds numerous registrations for the MARSHALL FIELD’S mark including United States Patent and Trademark Office Registration Nos. 1,273,988 and 1,273,987.  Both of the registrations for the MARSHALL FIELD’S mark were registered on the Principal Register on April 10, 1984. 

Complainant uses the MARSHALL FIELD’S mark in connection with retail department store sales services.  Complainant also uses the MARSHALL FIELD’S mark in electronic commerce on its informational and on-line shopping web site located at the <marshallfields.com> domain name.

Respondent registered the <marshelfields.com> and <marshellfield.com> domain names on March 4, 2002.  When an Internet user inputs the disputed domain names, the user is transferred to a web site featuring pornographic images at the <hanky-panky-college.com> domain name.

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 rights in the MARSHALL FIELD’S mark through continuous use in commerce and registration of the mark with the United States Patent and Trademark Office.  See The Men’s Wearhouse, Inc. v. Brian 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 Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

Respondent’s <marshelfields.com> and <marshellfield.com> domain names are confusingly similar to Complainant’s MARSHALL FIELD’S mark.  Respondent has merely misspelled the “MARSHALL” portion of the mark in the <marshelfields.com> domain name.  In addition to misspelling the MARSHALL mark in the <marshellfield.com> domain name, Respondent has also omitted the letter “s.”  Such differences are insufficient to create domain names that are distinct from Complainant’s MARSHALL FIELD’S mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not submit a response in this proceeding.  The Panel can accept all reasonable allegations and inferences submitted by Complainant in the absence of a response.  Since Respondent failed to submit a response, it has not shown any circumstances that could substantiate its rights or legitimate interests in the <marshelfields.com> and <marshellfield.com> domain names.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

No evidence has been presented to show that Respondent is commonly known by either of the disputed domain names.  Both the fame of Complainant’s mark and the name given in the WHOIS contact information for the <marshelfields.com> and <marshellfield.com> domain names supports the reasonable inference that Respondent is not commonly known as either of the disputed domain names.  The Panel reasonably infers the Policy ¶ 4(c)(ii) does not apply to Respondent.  Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Respondent does not have any rights or legitimate interests in the <marshelfields.com> and <marshellfield.com> domain names.  Respondent is using the disputed domain names to redirect Internet users to a web site featuring pornographic images located at the <hanky-panky-college.com> domain name.  The Panel reasonably infers that Respondent is financially benefitting by taking advantage of Complainant’s famous mark to redirect unsuspecting Internet users to the pornographic web site.  In addition, Respondent is tarnishing Complainant’s MARSHALL FIELD’S mark by subjecting unknowing Internet users to sexually explicit images.  Thus, the Panel finds that Respondent’s use of the disputed domain names does not establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (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 to tarnish Complainant’s mark); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website). 

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

Registration and Use in Bad Faith

Respodent is using the <marshelfields.com> and <marshellfield.com> domain names to redirect Internet users to a pornographic web site associated with the <hanky-panky-college.com> domain name.  Respondent’s redirection to this pornographic web site itself constitutes bad faith.  Wells Fargo & Co. v. Party Night Inc. and Peter Carrington, FA 144647 (Nat. Arb. Forum March 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Seweryn Nowak, D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).

Respondent registered and is using the <marshelfields.com> and <marshellfield.com> domain names in bad faith under Policy ¶ 4(b)(iv).  Respondent is creating a likelihood of confusion as to the source of sponsorship when it uses misspellings of Complainant’s well-known MARSHALL FIELD’S mark to redirect unsuspecting Internet users to the <hanky-panky-college.com> domain name which hosts a pornographic web site.  Based on the material displayed on the pornographic web site, the Panel reasonably infers that Respondent is commercially benefitting from its use of the disputed domain names.   Thus, the Panel finds that Respondent’s use of complainant’s well-known mark is evidence of bad faith registration and use.  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Sandra Franklin, Panelist

Dated: July 23, 2003

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