The Complainant is Target Brands, Inc. of Minneapolis, Minnesota, United States of America (“US”), represented by FairWinds Partners, LLC, US.
The Respondent is 2Imagen Whois Privacidad of San Pedro Sula, Honduras / Iris Milady Soto Puerto of San Pedro Sula, Honduras, represented by Greenberg & Lieberman, US.
The disputed domain name <tarhet.com> is registered with Tecnologia, Desarrollo Y Mercado S. de R.L. de C.V. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On January 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2013, the Registrar transmitted by email to the Center its verification response disclosing:
(a) it is the Registrar for the disputed domain name;
(b) as the disputed domain name is registered with a domain name privacy service, registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the Respondent had agreed, through the terms of the registration agreement to receive notices in either Spanish or English;
(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on January 21, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 28, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2013. The Response was filed with the Center on February 15, 2013.
On February 19, 2013, the Complainant submitted an unsolicited supplemental filing.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 27, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant owns or operates retail department stores under the name TARGET. It has approximately 1,750 stores in the US and offices in Bangalore, India. It generated revenues in 2009 of USD 63 billion.
It has a significant online presence through “www.target.com”. It has registered trademarks in the US for TARGET dating from the 1960s including trademarks Nos 818,410 of November 8, 1966 and 845,193 of February 27, 1968. The Complainant also has a registered trademark for TARGET in Honduras, No. 13,458, for services in international class 35 since June 17, 2008.
The disputed domain name resolves to different websites according, apparently, to whether one is located in Honduras or outside Honduras. If one is located in Honduras, according to the Respondent, the disputed domain name resolves to a website which has pay-per-click links in Spanish. On the printout included in Exhibit 3 to the Response, one of the first links is to a Honduran electronics store and another is to a German company that sells high quality oils. Under a heading “related searches”, there is a list of links such as Target Stores, New Release DVD, Target Baby Bedding, Target Online and various categories of computer related vendors (other than Target).
For those outside Honduras, the disputed domain name appears at different times to have resolved to two different types of website. Before an objection was notified by the Complainant to the Respondent, the disputed domain name resolved to websites offering apparently bogus USD 1,000 Target gift cards in return for compliance with various conditions which included the provision of a range of personal identification information. After the Complainant raised its objections with the Respondent, the disputed domain name resolved to fairly basic per-per-click websites with links to a variety of stores many of which the Complainant characterizes as its competitors including Pottery Barn, Ikea, Office Depot, Sam’s Club and so on.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response. Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
For the most part, the Complainant’s supplemental filing addresses matters raised in the Response which could not reasonably have been anticipated. The Panel, therefore, will include the supplemental filing in the record for this proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 4.2.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to above and, in addition, rights at common law in the US (at least) in relation to TARGET.
Putting to one side the addition of the generic top-level domain (gTLD) “.com”, the disputed domain name is identical to the Complainant’s trademark save for the replacement of the “g” by an “h”. The disputed domain name can be seen, therefore, as a very minor misspelling of the Complainant’s trademark. Moreover, these two letters are next to each other on the standard QWERTY keyboard and so one could quite easily be mis-typed for another. The potential for such mistakes has long been recognized as sufficient to constitute confusing similarity under the Policy: WIPO Overview 2.0, paragraph 1.10.
The Respondent argues against such a finding on the grounds that Tarhet el-Seir has geographical significance, being apparently an island in Egypt and “tarheta” may be seen by Hispanic speakers as sounding like “tarjeta”, meaning card in Spanish. These arguments misunderstand the nature of the inquiry at this stage under the Policy. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) 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; or
(ii) 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; or
(iii) 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 at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorized the Respondent to use the disputed domain name. Nor is the Respondent associated with the Complainant or its TARGET business in any way. Further, the disputed domain name does not appear to be derived from the Respondent’s name in any way.
In these circumstances, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent first points out that the Complainant does not have any TARGET stores operating in Honduras. Accordingly, it appears to be suggested that the Complainant’s rights do not extend to Honduras or affect the Respondent’s operations there. As noted above, it also points out that the name “Tarhet” can have geographical significance. In addition, the Respondent says she acquired the disputed domain name as part of a bundle of domain names acquired in 2007. Further, she says she acquired the disputed domain name because of its close resemblance to another domain name she owns, <tarheta.com> which, while not a Spanish word, sounds very much like the Spanish word “tarjeta” meaning “card”. The Respondent says that she registered the disputed domain name with the intention of using it for a webpage advertising other businesses offering “greeting cards” and “credit cards” to Spanish language Internet searchers.
First, the Panel notes that the Complainant does have a relevant registered trademark in Honduras.
Secondly, nothing on any version of the Respondent’s websites has anything to do with any place in Egypt, let alone anything to do with a place which may or (according to the Complainant) may not be called Tarhet el-Seir. As the examples given in paragraph 4(c) of the Policy indicate, a claim to rights or legitimate interests under the Policy will typically require some demonstration of use for the asserted purpose or good reasons why use has not yet commenced. The potential geographical significance of “tarhet”, if any, therefore does not avail the Respondent in this proceeding.
Thirdly, in its supplemental filing, the Complainant points out that the Respondent registered the domain name, <tarheta.com>, on December 18, 2012. That is almost a week after the Complainant sent its second letter objecting to the Respondent’s use of the disputed domain name. It is more than five years after the Respondent says she acquired the disputed domain name. Paragraph 7 of the Respondent’s declaration submitted in support of the Response, however, is quite specific that the Respondent acquired the disputed domain name to support her plans for <tarheta.com>:
The domain name <Tarhet.com> appealed to me because I also own the domain name Tarheta.com. “Tarheta” is not a Spanish word, but it sounds like “Tarjeta” the Spanish word for “card”.
This chronology of events simply does not support the purported justification.
Fourthly, the Panel readily accepts that use of a domain name for a website featuring or consisting of pay-per-click links can be a legitimate use under the Policy. However, that does not mean that every pay-per-click business is a legitimate interest. As the panel wrote in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141:
“[i]f the links on a given landing page are truly based on the generic value of the domain name, such use may be bona fide because there are no trademark rights implicated by the landing page. See, e.g., Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459 (PPC landing pages are legitimate if ‘the domain names have been registered because of their attraction as dictionary words and not because of their value as trademarks’).”
That is not this case, however.
Without entering into the argument between the parties about whether or not Spanish speakers would use “tarheta” for or associate it with “tarjeta”, neither the Respondent’s admitted use of the disputed domain name in Honduras nor the demonstrated use outside Honduras has anything to do with advertising, even by means of pay-per-click links, greeting cards or credit cards. (To the extent that the use outside Honduras involves “gift” cards, the Respondent disclaims liability for it and, in any event, the cards are apparently fake.)
As already noted in connection with the Respondent’s asserted claim based on the alleged geographical significance of “tarhet”, such use, or a good explanation for why it has not eventuated, is typically essential where the disputed domain name has trademark significance. Here, however, even on the Respondent’s own evidence, the disputed domain name is not being used in connection with such a putative business but rather to generate pay-per-click revenues with stores that can be seen as competing with the Complainant’s business. These uses would appear to be quite inconsistent with the Complainant’s registered trademark in Honduras as well.
Further, the Respondent contends she cannot be held responsible for the way the disputed domain name is used outside Honduras. It is not clear to the Panel why someone in Honduras would set up a website which could be accessed in one form only by people from Honduras and in another form by people outside Honduras. In any event, as the registrant of the disputed domain name, the Respondent has the ability to control what use is made of her domain name and, even if she was not aware of how its was being used to offer “Target” gift cards, the use of the disputed domain name changed after receipt of the Complainant’s objections but only to pay-per-click links to competitors of the Complainant.
Accordingly, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case that she has no rights or legitimate interests in the disputed domain name and so the second requirement under the Policy is established.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
In the absence of rights or a legitimate interest in the disputed domain name, the ways the Respondent is using the disputed domain name for Internet users whether in Honduras or outside Honduras constitutes bad faith contrary to the Policy as the Respondent appears to be using the trademark significance of the disputed domain name to generate revenues from pay-per-click activities much of which have no connection with the Complainant.
The Complainant contends that the fame of its trademark is such that the Respondent must have known about it when she acquired the disputed domain name and did so to take advantage of its trademark significance as denoting the Complainant’s business.
The Respondent denies that she had ever heard of the Complainant or its trademark and acquired the disputed domain name to support a business generating revenues from advertisements relating to greeting cards and credit cards. As discussed in sub-section 5B above, however, the asserted intention is not consistent with the objective facts demonstrated on the record in this proceeding. Given the rejection of that explanation and the way the disputed domain name has in fact been used, the Panel infers that the disputed domain name was in fact registered to take advantage of its resemblance to the Complainant’s trademark and so was registered in bad faith.
Accordingly, the Complainant has established this requirement under the Policy also.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tarhet.com> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: March 11, 2013