Target missed as UDRP complaint for the domain name TargetApplication.com was denied at NAF

Target had it’s UDRP complaint denied for the domain name TargetApplication.com. Panel said that a website with advertising links, can be a legitimate use, and that the presence of pay-per-click links on its site does not negate rights or legitimate interests. Respondent used an old UDRP complaint for target.org in order to further prove that the disputed domain was not registered in bad faith.

Complainant was Target Brands, Inc. Respondent was Virtual Services Corporation, Switzerland, represented by Paul Keating of Law.es, Spain.

Complainant submitted the Complaint to the National Arbitration Forum on November 7, 2012. The National Arbitration Forum appointed Petter Rindforth as Panelist. Although Respondent requested a three (3) member Panel in its Response, the Respondent did not make the required payment for a three member Panel -despite multiple reminders from the Forum.

Respondent registered the targetapplication.com domain name on November 26, 2005.

PARTIES’ CONTENTIONS

The Complainant states that the TARGET trademark is used in connection with the operation of retail department stores throughout the United States, being one of the most famous brands in that field. The Complainant is the owner of many U.S. and European trademark registrations. The Complainant holds numerous trademark registrations for the TARGET mark, the oldest registered in November 8, 1966.

The Respondent points out that Respondent does not operate in the United States, Complainant’s sole place of business. The Respondent states that Respondent was unaware of Complainant at the time it registered the targetapplication.com domain name.  According to the Respondent, the targetapplication.com domain name is an intended combination of the terms “target” and “application,” which, in the employment industry, refer to an application which is aimed at a specific job or employer. Respondent’s addition of the term “application” to Complainant’s TARGET mark renders an entirely different appearance and meaning. Respondent’s website offers information on how to target job applications, which would be of logical interest to Internet users who use employment websites. Respondent’s site advertises links to employment sites in general, which is a legitimate use.

PANEL’S DISCUSSION

The Panel found in favor of the Complainant in the first element of the UDRP: Identical and/or Confusingly Similar. The Complainant presents its trademark registrations with the USPTO to support its claim of rights in the TARGET mark, such as TARGET word mark, Reg. No. 818,410 registered November 8, 1966. The Panel notes that registration of a mark with the USPTO has previously been held to confer such rights in the mark under Policy ¶ 4(a)(i). Further, the Complainant has referred to the fact that it also holds a Swiss National trademark registration for TARGET, Switzerland being the home country of the Respondent. The Panel concludes that the <targetapplication.com> domain name is confusingly similar to Complainant’s TARGET mark for the purposes of Policy ¶ 4(a)(i).

The Panel found in favor of the Respondent in the second element of the UDRP. Respondent argues that it is in fact making a legitimate use of the disputed domain name, and thus should be found to have rights and legitimate interests in the domain pursuant to Policy ¶ 4(a)(ii). Respondent asserts that its site advertises links to employment sites in general, which is a legitimate use, and that the presence of pay-per-click links on its site does not negate rights or legitimate interests. The Panel notes that Respondent has in fact demonstrated at least legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel concludes that Respondent may well have legitimate interests in the disputed domain name.

The Panel found in favor of the Respondent in the third element of the UDRP:

The Respondent contends that targetapplication.com is comprised entirely of common terms that have many meanings apart from use in Complainant’s TARGETmark.  Where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may be considered use in good faith. See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term).

The Complainant’s trademark does not cover employment agency or similar consultancy services.

Thus the Panel concludes that the Complainant at least failed to prove that the disputed domain name was registered in bad faith.

The Panel concluded that relief shall be DENIED.