The Complainant is Tommy Bahama Group, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Private Whois of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2012. On February 6, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On February 7, 2012, I Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 29, 2012.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 8, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant in this administrative proceeding is Tommy Bahama Group, Inc. The Complainant has proved to own numerous registrations for the TOMMY BAHAMA Mark around the world, including the United States, Australia, the Bahamas, Canada, China, the European Union, Japan, Mexico, Peru and the Philippines. The Complainant has expanded its TOMMY BAHAMA line of products to include footwear, swimwear, sunglasses, eyewear, watches, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings.
The Complainant’s trademark registrations for the Mark TOMMY BAHAMA long predate the disputed domain name registration.
The Respondent registered the disputed domain name on February 24, 2011. 5. Parties’ Contentions A. Complainant
The Complainant claims that:
1) The disputed domain name is confusingly similar to the TOMMY BAHAMA Marks.
2) The Respondent has used the TOMMY BAHAMA Mark in the disputed domain name to cause confusion among Internet users between the Respondent’s website and the Complainant’s trademarks and website.
3) The addition of the term “outlet” to the TOMMY BAHAMA Mark does not lessen the confusing similarity between the disputed domain name and the Complainant’s Marks, but on the contrary it increases it.
4) The TOMMY BAHAMA Marks are extensively used and enjoy widespread recognition.
5) The Respondent has no rights or legitimate interests in the disputed domain name.
6) The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the TOMMY BAHAMA Marks in a domain name or in any other manner.
7) The use of the generic term “outlet”, along with the TOMMY BAHAMA Mark is obviously intended to create an association with the Complainant and its business.
8) The Respondent has never been known by the disputed domain name and has no legitimate interest in the TOMMY BAHAMA Marks or in the name TOMMY BAHAMA.
9) The disputed domain name is being used in bad faith for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s TOMMY BAHAMA Mark.
10) Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
11) The disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the TOMMY BAHAMA Marks at the time of registration.
12) The disputed domain name points to a portal website offering links to a variety of other websites, including sites offering TOMMY BAHAMA apparel and accessories.
13) The purpose of the Respondent’s use of the TOMMY BAHAMA Marks in the disputed domain name seems to be to obtain commercial gain in contravention of paragraph 4(b)(iv) of the Policy.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has established that it has rights in the TOMMY BAHAMA Mark and has stated that the disputed domain name is confusingly similar to it.
In order to substantiate this claim, the Complainant has argued that, “the addition of the term ‘outlet’ to the TOMMY BAHAMA mark does not lessen the confusing similarity between the disputed domain name and Complainant’s marks”.
This Panel agrees with the Complainant’s contention and previous UDRP decisions that the addition of a descriptive term like “outlet” to a trademark is not sufficient to avoid confusing similarity. This is even more true here where the disputed domain name combines the TOMMY BAHAMA Mark with the generic term “outlet”, which is a non distinctive term that commonly refers to a store in which manufacturers sell their stock directly to the public.
Supporting this, is for example, Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna,WIPO Case No. D2010-0988, where the panel wrote that:
“It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark (e.g., Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing,WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144).
The prefixes and suffixes incorporated in the Disputed Domain Names are descriptive words which are not distinctive. Used in conjunction with a well-known mark like the LACOSTE trademark further aggravates the likelihood of confusion (see Volvo Trademark Holding AB v. Uvelov, WIPO Case No. D2002-0521).”
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
i) that before any notice to the respondent of the dispute, he or she used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii) that the respondent is commonly known by the disputed domain name, even if he or she has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known as TOMMY BAHAMA or by a similar name, and has not alleged any facts to justify any rights and/or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for non commercial activities. Finally, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any right or legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Accordingly, for a complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Considering the history of the Complainant’s trademarks around the world; the extensive use and promotion also on the Internet; the Respondent’s use of the disputed domain name to point to a portal website offering links to a variety of other websites, including sites offering TOMMY BAHAMA apparel and accessories; that the use of the generic term “outlet”, along with the TOMMY BAHAMA Mark suggests that the Respondent must have known of the Complainant’s products and activities and intentionally intended to create an association with the Complainant and its business; and in the absence of contrary evidence, the Panel finds:
1) that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;
2) that the above described use of the disputed domain name i.e., to divert Internet traffic to the Respondent’s website where there are also products allegedly sold by the Complainant’s competitors, is further inference of bad faith use;
3) that the use of a privacy shield, not allowing the Panel to see the “true” or “underlying” registrant, does not permit to eventually find any legitimate reason and or justification in the registration of the disputed domain name e.g., correspondence between the registrant’s name and the disputed domain name. On the contrary, although the use of a privacy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith.
4) that in the absence of any rebuttal by the Respondent of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true the Complainant’s claims. See Talk City, Inc. v. Robertson,WIPO Case No. D2000-0009:
“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint. The Rules expressly provide that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’ Rule 14(b). Moreover, when a respondent defaults, the Rules direct the Panel to ‘proceed to a decision on the complaint.’ Rule 14(a); see also Rule 5(e). Furthermore, the Panel is charged with rendering its decision ‘on the basis of the statements and documents submitted.’ Rule 15(a).”
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: March 12, 2012
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