Tanger Factory Outlet Centers, Inc. v. Domain Administration Limited a/k/a David Halstead a/k/a William Vaughan a/k/a smtm investments ltd
Claim Number: FA0803001157272
Complainant is Tanger Factory Outlet Centers, Inc. (“Complainant”), represented by Gary
L. Beaver, of Nexsen Pruet, PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <tangeroutlets.com>, registered with Moniker Online Services, Inc., and <tangeroulet.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
On March 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 15, 2008 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@tangeroutlets.com and postmaster@tangeroulet.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tangeroutlets.com> domain name is identical to Complainant’s TANGER OUTLETS mark. Respondent’s <tangeroulet.com> domain name is confusingly similar to Complainant’s TANGER OUTLETS mark.
2. Respondent does not have any rights or legitimate interests in the <tangeroutlets.com> and <tangeroulet.com> domain names.
3. Respondent registered and used the <tangeroutlets.com> and <tangeroulet.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns and/or operates factory outlet retail
shopping centers. Complainant’s business
was founded in 1981 and was incorporated in 1988. Complainant registered the TANGER OUTLETS mark
with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <tangeroutlets.com>
domain name
on
Respondent
has been subject to at least three other UDRP domain name disputes, wherein all
the domain names were transferred to the respective complainants. See Deceuninck NV v. William Vaughan, smtm
investments ltd., D2007-1911 (WIPO
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s registration of the TANGER OUTLETS mark gives Complainant rights in the mark pursuant to Policy ¶ 4a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Furthermore, Complainant has used the TANGER OUTLETS mark
since its time of incorporation in 1988, if not earlier, to advertise and
promote its business to hundred of thousands of customers in 22
Complainant contends that
Respondent’s <tangeroutlets.com> domain name is identical to its TANGER OUTLETS mark. The <tangeroutlets.com> domain name differs from Complainant’s mark in two ways: (1)
the space between the terms has been removed; and (2) the generic top-level
domain (“gTLD”) “.com” has been added. The
Panel finds that these changes do not prevent the domain name from being
perceived as identical to Complainant’s mark, and so Respondent’s <tangeroutlets.com> domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO
Complainant contends that
Respondent’s <tangeroulet.com> domain name is confusingly similar to its TANGER
OUTLETS mark. The
<tangeroulet.com> domain name differs from Complainant’s mark in four ways:
(1) the spaces between the words have been removed; (2) the first letter “T”
has been removed from the term “outlets”; (3) the letter “S” has been removed
from the end of the term “outlets”; and (4) the generic top-level domain
(“gTLD”) “.com” has been added. The
Panel finds that these changes do not minimize or eliminate the resulting
likelihood of confusion, and so Respondent’s <tangeroulet.com> domain name
is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Planned Parenthood Fed’n
of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525
U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com>
domain name nearly identical); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879
(Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to the complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark); see also Universal City Studios, Inc. v. HarperStephens,
D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the
complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall
impression of the mark and thus made the disputed domain name confusingly similar
to it); see
also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th
Cir. 2002) (“Internet users searching for a company’s Web site often assume, as
a rule of thumb, that the domain name of a particular company will be the
company name or trademark followed by ‘.com.’”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii),
after the complainant makes a prima facie
case against the respondent, the respondent then has the burden of showing
evidence that it does have rights and legitimate interests in the disputed
domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Complainant contends that Respondent is not commonly known
by the disputed domain names nor have they ever been the owner or licensee of
the TANGER OUTLETS mark. The WHOIS
record for the <tangeroutlets.com>
domain name lists the Respondent as “David hALSTEAD wvaughan@dhg.mu, Domain
Administration Limited.” The WHOIS
record for the <tangeroulet.com> domain
names lists the Respondent as “William Vaughan, smtm investments ltd.” This evidence, along with the fact that
Respondent has failed to show any evidence contrary to Complainant’s
contentions, compels the Panel to find that Respondent is not commonly known as
either <tangeroutlets.com>
or <tangeroulet.com> pursuant
to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use); see also Valigene Corp. v. MIC, FA 94860 (Nat.
Arb. Forum Aug. 1, 2000) (“The
domain name in question is not a mark by which the Respondent is commonly known
. . . Rather, the Respondent is known by at least twenty ‘NIC handles’ with at
least four different phone numbers, three fax numbers, and eleven e-mail
addresses . . . . Under these multiple pseudo-names, the Respondent has
registered many domain names which include the famous trademarks of other
companies.”); see also Desotec N.V.
v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing
to respond allows a presumption that the complainant’s allegations are true
unless clearly contradicted by the evidence).
Respondent maintains websites at the disputed domain names that subjects visitors to numerous advertisements and hyperlinks that promote products and services offered by Complainant’s competitors. The Panel finds that this use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s website, through the confusion caused by the similarity between
the TANGER OUTLETS mark and the disputed domain names. The Panel finds that Respondent’s use of the
disputed domain names disrupts Complainant’s business, and is evidence of
registration and use in bad faith pursuant to Policy ¶ 4(b)(iii).
See
Puckett, Individually v. Miller, D2000-0297
(WIPO
Complainant also contends that Respondent is gaining commercially through this diversion, both through click-through fees and through the competing goods and services that Respondent is offering. The Panel finds that this is an intentional use of the disputed domain names for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in bad faith. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant also contends that
Respondent has a history of registering infringing domain names that
incorporate third-party trademarks, in order to host commercial search engines
and websites containing sponsored links.
See Deceuninck NV v.
William Vaughan, smtm investments ltd., D2007-1911 (WIPO
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tangeroutlets.com> and <tangeroulet.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 5, 2008
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