Westmore · UDRP DecisionShoptanger.com + 4 more domains
The single-member Panel ordered all five disputed domain names transferred. It found them confusingly similar to Complainant’s registered TANGER and TANGER OUTLETS marks, found no rights or legitimate interests because Respondent was neither authorized nor commonly known by the names and used them for competing and unrelated links, and found bad faith based on competitive disruption, a pattern of infringing registrations, and confusion-driven click-through fees.
The timeline behind shoptanger.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind shoptanger.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
How each disputed name was decided in this proceeding.
The Panel found that links to Complainant’s competitors likely disrupted Complainant’s business under Policy ¶ 4(b)(iii). Respondent’s history of infringing domain registrations established a pattern under Policy ¶ 4(b)(ii). The Panel also inferred that Respondent collected click-through fees by creating confusion as to affiliation or sponsorship, establishing bad faith under Policy ¶ 4(b)(iv).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
NATIONAL ARBITRATION FORUM DECISION Tanger Factory Outlet Centers, Inc. v. Caribbean Online International Ltd. a/k/a International Names Ltd. Claim Number: FA0803001157271 PARTIES Complainant is Tanger Factory Outlet Centers, Inc. (“Complainant”), represented by Gary L. Beaver, of Nexsen Pruet, PLLC, North Carolina, USA. Respondent is Caribbean Online International Ltd. a/k/a International Names Ltd. (“Respondent”), Bahamas. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <tangeroutletriverhead.com> and <tangerotlet.com> registered with Domaindoorman, LLC, <tangeroutletlocustgrove.com> and <shoptanger.com> registered with Belgiumdomains, LLC, and <tanger-outlet.com> registered with Capitoldomains LLC. PANEL 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. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2008. On March 10, 2008, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <shoptanger.com> and <tangeroutletlocustgrove.com> domain names are registered with Belgiumdomains, LLC and that Respondent is the current registrant of the names. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 March 10, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <tangeroutletriverhead.com> and <tangerotlet.com> domain names are registered with Domaindoorman, LLC and that Respondent is the current registrant of the names. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC 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 March 10, 2008, Capitoldomains LLC confirmed by e-mail to the National Arbitration Forum that the <tanger-outlet.com> domain name is registered with Capitoldomains LLC and that Respondent is the current registrant of the name. Capitoldomains LLC has verified that Respondent is bound by the Capitoldomains LLC 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 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@shoptanger.com, postmaster@tangeroutletlocustgrove.com, postmaster@tangeroutletriverhead.com, postmaster@tangerotlet.com and postmaster@tanger-outlet.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 23, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist. 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. 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 <shoptanger.com>, <tangeroutletlocustgrove.com>, <tangeroutletriverhead.com>, <tangerotlet.com> and <tanger-outlet.com> domain names are confusingly similar to Complainant’s TANGER and TANGER OUTLETS marks. 2. Respondent does not have any rights or legitimate interests in the <shoptanger.com>, <tangeroutletlocustgrove.com>, <tangeroutletriverhead.com>, <tangerotlet.com> and <tanger-outlet.com> domain names. 3. Respondent registered and used the <shoptanger.com>, <tangeroutletlocustgrove.com>, <tangeroutletriverhead.com>, <tangerotlet.com> and <tanger-outlet.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Tanger Factory Outlet Centers, Inc., uses the TANGER mark in order to promote its retail shopping outlets and retail shopping centers featuring general consumer goods. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TANGER mark (Reg. No. 78,657,632 filed June 24, 2005 and issued June 6, 2006). Complainant also owns a trademark registration with the USPTO for the TANGER OUTLETS mark (Reg. No. 78,657,612 filed June 24, 2005 and issued June 6, 2006). Respondent registered the <shoptanger.com> domain name on October 13, 2007, <tangeroutletlocustgrove.com> on July 24, 2007, <tangeroutletriverhead.com> on December 25, 2006, <tangerotlet.com> on November 18, 2006 and <tanger-outlet.com> on August 31, 2005. Respondent’s disputed domain names resolve to websites displaying advertisements and links to third-party websites offering products and services in competition with Complainant. Respondent has a history of registering domain names infringing upon the trademark rights of others, and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Dairyland Ins. Co. v. Int’. Names Ltd., FA 1125172 (Nat. Arb. Forum Feb. 11, 2008); Digimoney v. Int’l Names Ltd., FA 110873 (Nat. Arb. Forum Jan. 18, 2008); Keirsey v. Caribbean Online Int’l Ltd., FA 1106078 (Nat. Arb. Forum Dec. 27, 2007); Ace Cash Express, Inc. v. Caribbean Online Int’l Ltd., FA 1094542 (Nat. Arb. Forum Dec. 5, 2007); DaimlerChrysler AG v. Caribbean Online Int’l Ltd., FA 1089028 (Nat. Arb. Forum Nov. 19, 2007). 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. 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. Identical and/or Confusingly Similar Even though Respondent registered the <tanger-outlet.com> domain name on August 31, 2005, before the USPTO registered Complainant’s TANGER OUTLETS mark on June 6, 2006, the Panel finds that the effective date for Complainant’s federal rights is the filing date on June 24, 2005. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Therefore, by registering the TANGER and TANGER OUTLETS marks with the USPTO, Complainant has established rights in the marks under Policy ¶ 4(a)(i). See 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."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant contends that Respondent’s disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). Respondent’s <shoptanger.com> domain name contains Complainant’s TANGER mark in its entirety, and adds the generic term associated with Complainant’s business “shop.” The Panel finds that a domain name which contains a complainant’s mark and adds a generic term with an obvious relationship to a complainant’s business is confusingly similar for purposes of Policy ¶ 4(a)(i). See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense). In addition, Respondent’s <tangerotlet.com> and <tanger-outlet.com> domain names contain a misspelling of Complainant’s TANGER OUTLETS mark, and one adds a hyphen. The Panel finds that a misspelled version of a complainant’s mark and adding a hyphen does not create a distinctive domain name and is confusingly similar pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive) Respondent’s <tangeroutletlocustgrove.com> and <tangeroutletriverhead.com> domain names contain a mispelled version of Complainant’s TANGER OUTLETS mark and add a geographic location. The Panel finds that a domain name which contains a mispelled version of complainant’s mark and adds a generic term describing a geographic location is confusingly similar pursuant to Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"). Lastly, each of the disputed domain names add the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, pursuant to Policy ¶ 4(a)(i), the disputed domain names are confusingly similar to Complainant’s marks. The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant must show that Respondent lacks all rights and legitimate interests in the disputed domain names to meet its initial burden under Policy ¶ 4(a)(ii). After Complainant has made a prima facie case, the burden shifts to Respondent to demonstrate that it has those rights and interests. The Panel concludes that Complainant’s assertion that Respondent lacks rights and legitimate interests is sufficient to make a prima facie case under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Because Respondent has failed to respond to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain names. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Nevertheless, the Panel will examine all evidence in the record to establish whether Respondent has rights or legitimate interests under Policy ¶ 4(c). Complainant contends that it has never licensed or otherwise authorized Respondent to use the TANGER and TANGER OUTLETS marks. The WHOIS information lists the registrant as “International Names Ltd.” and “Caribbean Online International Ltd.,” thereby not indicating that Respondent is commonly known by the disputed domain names. The Panel concludes that Respondent has not demonstrated rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Respondent is using the disputed domain names to advertise links to competing websites and also displaying unrelated links. Complainant asserts that Respondent has not demonstrated a right to or legitimate interest in the disputed domain names by using them to redirect Internet users to competing and unrelated websites. The Panel finds that Respondent’s use of the disputed domain names does not evidence a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also 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). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith The website that resolves from the disputed domain names links Internet users to Complainant’s competitors. The Panel concludes that this use is likely to disrupt the business of Complainant under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). In addition, Respondent has a long history of registering domain names infringing upon the trademark rights of others, and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Dairyland Ins. Co. v. Int’. Names Ltd., FA 1125172 (Nat. Arb. Forum Feb. 11, 2008); Digimoney v. Int’l Names Ltd., FA 110873 (Nat. Arb. Forum Jan. 18, 2008); Keirsey v. Caribbean Online Int’l Ltd., FA 1106078 (Nat. Arb. Forum Dec. 27, 2007); Ace Cash Express, Inc. v. Caribbean Online Int’l Ltd., FA 1094542 (Nat. Arb. Forum Dec. 5, 2007); DaimlerChrysler AG v. Caribbean Online Int’l Ltd., FA 1089028 (Nat. Arb. Forum Nov. 19, 2007). The Panel finds that a pattern of registration and use of domain names with established marks is further evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). Lastly, Respondent is using the disputed domain names for the purpose of collecting click-through fees for each misdirected Internet user connected to the disputed domain names. In these cases, the Panel infers click-through fees are being collected. Internet users searching for Complainant’s website will likely be confused into thinking that the disputed domain names are affiliated with or sponsored by Complainant. The Panel finds that Respondent’s registration and use of the disputed domain names in order to cause confusion and collect referral fees for each misdirected Internet user is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also 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.”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <shoptanger.com>, <tangeroutletlocustgrove.com>, <tangeroutletriverhead.com>, <tangerotlet.com> and <tanger-outlet.com> domain names be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: May 5, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM
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