DECISION

 

SPG IP Holdings, LLC v. nekp bep

Claim Number: FA2403002090788

PARTIES

Complainant is SPG IP Holdings, LLC ("Complainant"), represented by Yinka Babarinde of CSC Digital Brand Services AB, Sweden. Respondent is nekp bep ("Respondent"), District of Columbia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <shoppremiumoutlet.us>, registered with Dynadot Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 28, 2024; Forum received payment on March 28, 2024.

 

On March 28, 2024, Dynadot Inc confirmed by e-mail to Forum that the <shoppremiumoutlet.us> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the names. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On March 28, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@shoppremiumoutlet.us. Also on March 28, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 18, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, 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

Founded in 1993, Complainant is an American real estate investment trust that invests in shopping malls, outlet centers, and community/lifestyle centers. Complainant is the largest mall operator in the U.S. and operates properties in a number of other countries. Simon Property Group, L.P. is the sole member of the Complainant. On October 2, 2019, Complainant announced a joint venture with Gilt Groupe for <ShopPremiumOutlets.com>, an online shopping platform focused on its outlet malls, to create a new e-commerce platform dedicated to value shopping. The trademarks S SIMON PREMIUM OUTLETS, PREMIUM OUTLETS, and SHOP PREMIUM OUTLETS (the "Marks") have been registered with the United States Patent and Trademark Office ("USPTO") (e.g., US Reg. No. 3315244 for PREMIUM OUTLETS, Registered on October 23, 2007, and US Reg. No. 5955766 for SHOP PREMIUM OUTLETS, Registered on January 7, 2020), and have been used since 1996.

 

The <shoppremiumoutlet.us> domain name, registered on November 28, 2023, is confusingly similar to the Marks as it incorporates copies of them, replacing the word "Simon" with "Shop", omitting the final letter "s" in "outlets", and adding the ".us" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name as it owns no relevant trademark rights, it is not commonly known by the domain name, and it does not make a bona fide offering of goods or services where the disputed domain name resolves to a website that imitates and passes itself off as Complainant by copying Complainant's mark and logo and offering similar products and brands as those offered in Complainant's stores and websites.

 

The disputed domain name was registered and is used in bad faith, based on the above-mentioned content of Respondent's website, where it disrupts Complainant's business and seeks commercial gain based on a likelihood of confusion with Complainant's well-known marks. Further, Respondent has exhibited a pattern of bad faith conduct by registering domain names that misappropriate the trademarks of other well-known brands and businesses and has also failed to respond to Complainant's cease-and-desist letters.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns trademark rights to the Marks and the <shoppremiumoutlet.us> domain name is confusingly similar to such marks;

-       Respondent does not have rights or legitimate interests in the disputed domain name where it is used to pass off advertised retail shopping services as those of Complainant and there is no evidence that Respondent has any relevant trademark rights or is commonly known by the domain name; and

-       The disputed domain name was registered and is used in bad faith where its website passes itself off as Complainant to offer unauthorized services under Complainant's mark, Respondent has engaged in a pattern of registering cybersquatted domain names, and it has failed to respond to Complainant's attempts at correspondence.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a 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 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the Marks based upon registration thereof with the USPTO. Under Policy ¶ 4(a)(i), registration with such trademark offices is sufficient to establish rights in a trademark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).") As Complainant has submitted screenshots of its USPTO registration certificates and from the USPTO website evidencing registration of its asserted trademarks¹, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent's <shoppremiumoutlet.us> domain name is identical or confusingly similar to the Marks as it incorporates copies of them, replacing the word "Simon" with "Shop", omitting the final letter "s" in the word "outlets", and adding the ".us" TLD. Misspelling a mark through some combination of adding a generic word, omission of a letter, and adding a TLD rarely distinguishes the disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i) and is often referred to as "typosquatting". See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the "e" and "r" from the mark while adding the ".com" gTLD suffix.); Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.") As the <shoppremiumoutlet.us> domain name merely replaces the word "Simon" with "shop", omits the letter "s" from the end of Complainant's Marks and adds the ".us" ccTLD, the Panel finds that it is confusingly similar to such marks per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

Complainant addresses usDRP ¶ 4(c)(i) which states that rights or legitimate interests may be found where a respondent is "the owner or beneficiary of a trade or service mark that is identical to the domain name." See Pepsico, Inc. v. Becky, FA 117014 (Forum Sep. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Complaint states that "Complainant has not found any evidence that Respondent owns any service marks or trademarks that reflect the <shoppremiumoutlet.us> domain name." It submits the results of a Google search for the term "shoppremiumoutlet", and none relate in any way to Respondent. The Respondent has not participated in these proceedings and there is no other evidence of record relevant to Policy ¶ 4(c)(i). As such, the Panel cannot conclude that Respondent has any rights or legitimate interests in the disputed domain name under this clause.

 

Next, Complaint addresses Policy ¶ 4(c)(iii) and asserts that Respondent is not commonly known by the disputed domain name. It points to the WHOIS record for the disputed domain name and also mentions that Respondent is not authorized to use the asserted mark. WHOIS information is often referenced when considering whether a respondent is commonly known by the disputed domain name under this section of the Policy. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to [UDRP] Policy ¶ 4(c)(ii)). Additionally, lack of evidence in the record to indicate that a complainant has authorized respondent to register a domain name using an asserted mark may support a finding that a respondent does not have rights or legitimate interests in a disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per [UDRP] Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name, as verified to Forum by the concerned Registrar, only lists the registrant as "nekp bep" and there is no evidence to otherwise identify Respondent. Further, Complainant states that Respondent's use of the disputed domain name is "without Complainant's authorization or approval." Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(iii).

 

Finally, the Complaint notes that the disputed domain name resolves to a website that claims to offer retail shopping services under Complainant's Marks and thus seeks to pass itself off as a legitimate source of Complainant's services. Prior decisions have held that passing oneself off as a complainant and diverting users to a respondent's webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Guess? IP Holder L.P. and Guess?, Inc. v. Kathrin Gerste / Martin Engel / Ulrike Schreiner / Juliane Scherer / Barbara Blau, FA 2080822 (Forum Feb. 23, 2024) ("Respondent's website purports to offer counterfeit clothing, apparel, and accessories for sale, while displaying Complainant's trademark and copyrighted images owned by Complainant. Respondent's use of the at-issue domain names to pass off in this manner constitutes neither a bona fide offering of goods or services under [UDRP] Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to [UDRP] Policy ¶4(c)(iii).") Here, Complainant provides screenshots of the resolving <shoppremiumoutlet.us> website which displays the mark SHOP PREMIUM OUTLETS followed by the word "SIMON" and a graphic logo that is identical to that used by Complainant. The page displays a number of handbag, backpack, and footwear products below each of which appears one price in a strike-through grey font followed by a lower price in black font. The product images are also overlaid with black circles on which appear negative numbers and the percent symbol indicating a reduction in price. At the bottom of the page appears the notice "Copyright 2023 © SHOP PO, LLC" which is the same footer used on Complainant's own website. Finally, a screenshot of Respondent's "About" page is submitted and this displays a paragraph of text which is also identical to certain text appearing on Complainant's own website. This includes the sentence: "The Shop Premium Outlets (SPO) marketplace brings the Simon Premium Outlets experience online to connect you to the brands you love in a convenient way." From this evidence, the Panel finds support for the conclusion that Respondent is misleading consumers by impersonating and passing itself off as Complainant. Respondent has not filed a Response or made any other submission in this case and so it provides no explanation for its activities. Thus, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and that there is no evidence that Respondent is using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or that it is making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).

 

Considering all of the above, the Panel finds, by a preponderance of the presented evidence, that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

Complainant asserts that Respondent registered the <shoppremiumoutlet.us> domain name with knowledge of Complainant's rights in the Marks based on the marks' reputation and Respondent's use of the disputed domain name to provide services that compete with Complainant. Actual knowledge of a complainant's trademark rights may form a solid foundation upon which to establish bad faith and may be inferred when a respondent uses an identical disputed domain name to pass itself off as a complainant. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) ("[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.") Complainant submits into evidence the results of website analytics showing that its legitimate <shoppremiumoutlets.com> website has received an average of 6 million visits per month during the period between November 2023 and January 2024. It also submits its listing on the New York Stock Exchange and reports of rankings and awards including its appearance at #730 on the Forbes Global 2000 list and at #182 on the list of America's Largest Public Companies. Further, as noted above, Complainant provides screenshots of pages from Respondent's website and these clearly show an attempt at impersonating Complainant and passing itself off as an outlet for its online retail services. From this evidence of Complainant's brand reputation and Respondent's use of the disputed domain name, the Panel finds that Respondent had actual knowledge of the asserted marks at the time that it registered the disputed domain name.

 

Next, Complainant asserts that Respondent registered and uses the <shoppremiumoutlet.us> domain name in bad faith because Respondent has engaged in typosquatting and passes itself off as Complainant by disrupting its business and confusing would-be customers into thinking that they are dealing with a website that is a source for Complainant's genuine services. Such conduct is indicative of bad faith per Policy ¶ 4(b)(iv). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16833 (Forum Aug. 11, 2016) ("Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name's registrant.") Also see Tesla Inc. v. Ultimate / Jonathan Littlewood, FA 2052426 (Forum Aug. 2, 2023) (finding bad faith where "Respondent has attempted to commercially gain or otherwise benefit by fraudulently impersonating Complainant to entice shoppers to purchase on Respondent's website."); Jarrow Formulas, Inc. v. Boyan Kabakov / Triping EOOD, FA 2080725 (Forum Feb. 15, 2024) (bad faith found where Respondent's website "uses the Complainant's mark and logo as a masthead and the Complainant's copyright materials…") Complainant asserts that the Marks are used without permission and that the displayed logo and services offered by the Respondent are unauthorized but identical in nature to those used and offered by Complainant. The Panel again references the submitted screenshots which show Respondent's multiple uses of Complainant's Marks and graphic logo, the offering for sale of products supposedly at substantially discounted prices, the use of a copyright notice that references one of Complainant's corporate entities, and the copying of text on the "About" page from Complainant's own site which references Complainant's mark "Simon Premium Outlets". The evidence presented gives the clear impression that Respondent's website originates with Complainant and is improperly seeking commercial gain based on confusion with its marks. It is thus targeting the marks and seeking to compete with Complainant. As such, the Panel finds firm ground upon which to conclude that Respondent both registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv) and thus under ¶ 4(a)(iii).

 

Complainant next asserts that Respondent has engaged in a pattern of conduct involving the targeting of other well-known trademarks. Where a respondent is found to have engaged in a pattern of bad faith conduct, such as through its ownership of other cybersquatted domain names and prevented a complainant from reflecting its mark in a corresponding domain name, Panels have found bad faith per Policy ¶ 4(b)(ii). See Oracle International Corporation v. Dong Chen Payments L.D.C., FA 1827285 (Forum Mar. 11, 2019) ("Registration of multiple other domain names that obviously infringe on third-party trademarks may be evidence of bad faith under Policy ¶ 4(b)(ii)"). Here, Complainant provides WHOIS records for certain other domain names that are owned by Respondent and references the trademarks that they copy: <pelotons.us> (Peloton Interactive, Inc.), <arcteryxsale.us> (Arc'teryx Equipment Inc.), and <benchmades.us> (Benchmade Knife Company, Inc.).² Based on the above, the Complainant's assertion is well-founded and the Panel finds that Respondent has engaged in a pattern of bad faith conduct which has prevented Complainant from reflecting its mark in a corresponding domain name pursuant to Policy ¶ 4(b)(ii).

 

Finally, Complainant argues that Respondent acted in bad faith because Respondent did not respond to Complainant's multiple cease-and-desist letters. The failure to respond to a cease-and-desist letter can, in light of other circumstances surrounding a case, support a finding of bad faith under Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides screenshots of three cease-and-desist letters that it sent to the email address listed for Respondent in the WHOIS record for the disputed domain name. It received no response to any of these. In view of all of the facts of this case, including Respondent passing off its website as that of Complainant, the Panel finds that Respondent's failure to respond to Complainant's multiple cease-and-desist letters does lend further support to its above conclusions that Respondent acted in bad faith.

 

DECISION

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

 

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

 

 

 

 

Steven M. Levy, Esq., Panelist

Dated: April 20, 2024