national arbitration forum

 

DECISION

 

Tanger Factory Outlet Centers, Inc. v. Marketing Total S.A. a/k/a Keyword Marketing Inc.

Claim Number: FA0802001155675

 

PARTIES

Complainant is Tanger Factory Outlet Centers, Inc. (“Complainant”), represented by Gary L. Beaver, of Nexsen Pruet, PLLC, North Carolina, USA.  Respondent is Marketing Total S.A. a/k/a Keyword Marketing Inc. (“Respondent”), of Saint Kitts and Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tangeroutle.com> registered with Capitoldomains, LLC; <tangeroutletsmall.com>, <tangeroulitmall.com>, <tangeroutlest.com> and <tangerfactory.com> registered with Belgiumdomains, LLC; <wwwtanger.com> and <tangeroutletscenter.com> registered with Domaindoorman, 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.

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 3, 2008.

 

On March 1, 2008, Capitoldomains, LLC confirmed by e-mail to the National Arbitration Forum that the <tangeroutle.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 1, 2008 Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <tangeroutletsmall.com> and <tangeroulitmall.com> domain names are registered with Belgiumdomains, LLC and that Respondent is the current registrant of the names.  On March 5, 2008 Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <tangeroutlest.com>, <tangerfactory.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 the Policy.

 

On March 1, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <wwwtanger.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name.  On March 12, 2008, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <tangeroutletscenter.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name.  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 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@tangeroutle.com, postmaster@tangeroutletsmall.com, postmaster@wwwtanger.com, postmaster@tangeroutlest.com, postmaster@tangerfactory.com, postmaster@tangeroutletscenter.com and postmaster@tangeroulitmall.com by e-mail.

 

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

 

On May 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

            Preliminary Issue:  Other Correspondence/Consent to Transfer

 

While Respondent has not submitted a Response in this action, Respondent has submitted an electronic correspondence indicating that it would like to transfer the disputed domain names to Complainant.  See Boehringer Ingelheim Int’l GmbH v Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. V. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant … Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).  

             

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <tangeroutle.com>, <tangeroutletsmall.com>, <wwwtanger.com>, <tangeroutlest.com>, <tangerfactory.com>, <tangeroutletscenter.com> and <tangeroulitmall.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 <tangeroutle.com>, <tangeroutletsmall.com>, <wwwtanger.com>, <tangeroutlest.com>, <tangerfactory.com>, <tangeroutletscenter.com> and <tangeroulitmall.com> domain names.

 

3.      Respondent registered and used the <tangeroutle.com>, <tangeroutletsmall.com>, <wwwtanger.com>, <tangeroutlest.com>, <tangerfactory.com>, <tangeroutletscenter.com> and <tangeroulitmall.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. 3,100,701 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. 3,100,700 filed June 24, 2005 and issued June 6, 2006).

 

Respondent registered the <tangeroulitmall.com> domain name on September 20, 2007, the <tangeroutle.com> domain name on September 16, 2005, the <tangeroutletscenter.com> on June 16, 2007, the <tangeroutletsmall.com> domain name on September 14, 2007, the <wwwtanger.com> domain name on May 16, 2006, the <tangeroutlest.com> domain name on November 10, 2006, and the <tangerfactory.com> domain name on November 12, 2006.  Respondent’s disputed domain names resolves to websites displaying links to third-party websites both unrelated to Complainant and 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 PH4 Corp. v. Keyword Marketing, Inc., FA 1119345 (Nat. Arb. Forum Feb. 8, 2008); Spokane Hardware Supply, Inc. v. Marketing Total, S.A., FA 1122787 (Nat. Arb. Forum Jan. 29, 2008); SkinMedica, Inc. v. Keyword Marketing, Inc., FA 112121 (Nat. Arb. Forum Jan. 2, 2008); Endurance Specialty Holdings Ltd. v. Marketing Total S.A., FA 1103590 (Nat. Arb. Forum Dec. 12, 2007); Ace Cash Express, Inc. v. Marketing Total S.A., FA 1097327 (Nat. Arb. Forum Dec. 10, 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 <wwwtanger.com> domain name on May 16, 2006, before the USPTO registered Complainant’s TANGER mark on June 6, 2006, the Panel finds that the effective date for Complainant’s trademark 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 asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s TANGER and TANGER OUTLETS marks pursuant to Policy ¶ 4(a)(i).  Each of the disputed domain names contains Complainant’s mark or contain a misspelled version of Complainant’s mark.  The Panel finds that a disputed domain name which contains a misspelled version of a complainant’s mark creates a confusing similarity between the disputed domain name and the mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).  Respondent’s <tangeroutletsmall.com> and <tangeroulitmall.com> domain names add the term “mall,” the <tangerfactory.com> domain name adds the term “factory,” and the <tangeroutletscenter.com> domain name adds the term “center.”  The Panel finds that the addition of a generic term with an obvious relationship with a complainant’s business to a complainant’s mark or a misspelled version of a complainant’s mark fails to establish a distinct disputed domain name pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).  Lastly, Respondent’s <wwwtanger.com> domain name adds “www” to Complainant’s TANGER mark.  The Panel finds that the addition of “www” to a complainant’s mark creates a confusing similarity because the respondent is essentially trying to capitalize on Internet users typing mistakes.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).  Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s disputed domain names are all confusingly similar to Complainant’s TANGER and TANGER OUTLETS 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 “Marketing Total S.A.” and “Keyword Marketing Inc.,” 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

 

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 PH4 Corp. v. Keyword Marketing, Inc., FA 1119345 (Nat. Arb. Forum Feb. 8, 2008); Spokane Hardware Supply, Inc. v. Marketing Total, S.A., FA 1122787 (Nat. Arb. Forum Jan. 29, 2008); SkinMedica, Inc. v. Keyword Marketing, Inc., FA 112121 (Nat. Arb. Forum Jan. 2, 2008); Endurance Specialty Holdings Ltd. v. Marketing Total S.A., FA 1103590 (Nat. Arb. Forum Dec. 12, 2007); Ace Cash Express, Inc. v. Marketing Total S.A., FA 1097327 (Nat. Arb. Forum Dec. 10, 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)).

 

In addition, Respondent’s disputed domain names resolve to websites offering links to third-party websites with both unrelated material and content in competition with Complainant.  The Panel finds that such use of the confusingly similar disputed domain names causes a disruption to Complainant’s business and provides evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); 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)).

 

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

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <tangeroutle.com>, <tangeroutletsmall.com>, <wwwtanger.com>, <tangeroutlest.com>, <tangerfactory.com>, <tangeroutletscenter.com> and <tangeroulitmall.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  June 11, 2008

 

 

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