Tanger Properties, L.P. v. lau zion
Claim Number: FA2109001964392
Complainant is Tanger Properties, L.P. (“Complainant”), represented by Stephen Shaw of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is lau zion (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tanger.ink> (“Domain Name”), registered with Dynadot, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2021; the Forum received payment on September 20, 2021.
On September 21, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <tanger.ink> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2021 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@tanger.ink. Also on September 23, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 Name be cancelled.
A. Complainant
Complainant, Tanger Properties, L.P., operates in real estate management and business management in the field of shopping centers and retail shopping outlets. In particular it owns and operates a number of large scale shopping centers that trade under TANGER and TANGER-formative marks such as TANGER OUTLETS. Complainant claims rights in the TANGER mark through its registration with the United States Patent and Trademark Office (USPTO) (Reg. 3,100,701, registered June 6, 2006). The Domain Name, <tanger.ink>, is identical or confusingly similar to Complainant’s TANGER mark because it wholly incorporates Complainant’s mark merely adding in the “.ink” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <tanger.ink> domain name because Respondent is not authorized to use Complainant’s TANGER mark. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the Domain Name to defraud Complainant’s customers, suppliers, and business relationships by offering unauthorized third party products from the website accessed from the Domain Name (“Respondent’s Website”).
Respondent registered and uses the <tanger.ink> domain name in bad faith because Respondent disrupts Complainant’s business by selling counterfeit goods, causing confusion as to the Domain Name’s affiliation with Complainant. Respondent acted with actual knowledge of Complainant’s rights in the TANGER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TANGER mark. The Domain Name is confusingly similar to Complainant’s TANGER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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."
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.
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”).
Complainant has rights in the TANGER mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. 3,100,701, registered June 6, 2006). Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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).”).
The Panel finds that the <tanger.ink> domain name is identical to the AN TANGER mark as it fully incorporates the TANGER mark adding only the “.ink” gTLD. The addition of a gTLD is not enough to distinguish a respondent’s domain name from a complainant’s mark. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the TANGER mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (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 Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “lau zion” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
Complainant alleges, and provides clear evidence to support its allegation, that prior to the commencement of the proceeding Respondent used the Domain Name for a website that passes itself off as an official website of the Complainant (through the use of the Complainant’s TANGER and TANGER OUTLETS marks) for the purpose of selling third party fashion accessories in direct competition with fashion accessories sold through the Complainant’s properties. The use of a confusingly similar domain name to resolve to a webpage that offers third party goods in competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, June 28, 2021, Respondent had actual knowledge of Complainant’s TANGER mark since the Respondent’s Website passes itself off as an official website of the Complainant. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the TANGER mark and use it to redirect visitors to a website selling goods under the TANGER mark other than to take advantage of Complainant’s reputation in the TANGER mark in the field of retail. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s TANGER mark for commercial gain by using the confusingly similar Domain Name to resolve to a website selling fashion accessories in direct competition with fashion accessories offered by Complainant’s business partners at Complainant’s shopping centers. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”) ); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tanger.ink> domain name be CANCELLED.
Nicholas J.T. Smith, Panelist
Dated: October 18, 2021
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