The Complainant is Tommy Bahama Group, Inc. of Atlanta, Georgia, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America; Online Management of the Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2013. On September 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 19, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 20, 2013.
The Center verified that the Complaint together with the amended 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 September 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2013.
The Center appointed Jacques de Werra as the sole panelist in this matter on November 4, 2013. 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 has commercialized apparel and accessories under the Tommy Bahama brand sine 1993 in the United States and in various other countries. It is the owner of numerous trademark registrations for the TOMMY BAHAMA trademark (the “Trademark”) around the world, including the United States of America, Australia, the Bahamas, Canada, China, the European Union, Japan, Macau, Mexico, Peru, the Philippines, Singapore and the United Arab Emirates. The Complainant uses the Trademark in connection with diverse types of apparel and accessories including hats, swimwear, foot0wear, watches, sunglasses, eyewear, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings.
The Complainant operates a website at the domain name which features information about the Complainant’s products, retail store and restaurant locations, and customer services and product care information.
The Respondent registered the Disputed Domain Name on July 31, 2013 which is long after the first use and registration of the Trademark by the Complainant. The Disputed Domain Name resolves to a portal website containing pages with links to other websites related to the Complainant’s goods and to goods offered by competing companies. 5. Parties’ Contentions A. Complainant
The Complainant claims that the Disputed Domain Name is confusingly similar to the Trademark because it integrates the Trademark to which the word “hats” has been added which only increases the risk of confusion because consumers will be led to think that the Complainant’s hats are available on the website associated with the Disputed Domain Name.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Complainant’s first use and first registration of the Trademark long predates the registration of the Disputed Domain Name. The Respondent cannot demonstrate or establish rights or a legitimate interest in respect of the Disputed Domain Name because there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s Trademark. The Respondent has not been commonly known as “Tommy Bahama” or done business under that name. The Respondent’s use of the Disputed Domain Name is not in connection with a bona fide attempt to offer goods and services to the public.
The Respondent registered and is using the Disputed Domain Name in bad faith for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s Trademark. The Respondent also uses the Disputed Domain Name for its own commercial gain because it points to a portal website offering links to a variety of other websites, including sites offering the Complainant’s apparel and accessories which constitutes evidence of bad faith. In addition, the Respondent’s webpage not only contains a list of sponsored links but also an unambiguous offer for sale of the Disputed Domain Name which constitutes an additional evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the Trademark.
A comparison between the Disputed Domain Name and the Trademark owned by the Complainant shows that the Disputed Domain Name is clearly confusingly similar to it to the extent that it reproduces the entirety of the Trademark to which the word “hats” has been added in the final part of the Disputed Domain Name. In this respect, the addition of the descriptive word “hats” does not affect this finding of confusing similarity. Quite to the contrary, the addition of this word increases the risk of confusion with the Complainant’s Trademark and with the Complainant itself, given that it directly refers to a line of products which the Complainant offers. See also Tommy Bahama Group, Inc. v. Berno Group International,WIPO Case No. D2012-0531 and Tommy Bahama Group, Inc. v. Private Whois ,WIPO Case No. D2012-0197.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable 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) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Question, Second Edition (“WIPO Overview 2.0”).
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name, which fully integrates the Trademark owned by the Complainant, in a way which can only be explained by reference to the Complainant’s products and business activities. The Panel holds that the addition of the word “hats” to the Disputed Domain Name further reinforces the intended reference to the Complainant’s products and activities. The Panel also finds that the website associated with the Disputed Domain Name constitutes a portal pointing to various websites, some of which point to the Complainant’s products while others point to competing products. Therefore the Respondent is clearly targeting the Complainant.
The Complainant has also stated without being contradicted that the Respondent has no rights or legitimate interests in the Disputed Domain Name, that the Respondent has not been authorized or licensed to use the Complainant’s Trademark, that the Respondent has not been commonly known as “Tommy Bahama” or done business under that name and that the Respondent’s use of the Disputed Domain Name is not in connection with a bona fide attempt to offer goods and services to the public.
The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of rights to or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s absence in these proceedings.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name;
(ii) circumstances indicating that the Respondent registered the Disputed 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;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s products so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark owned by the Complainant. In addition, the Respondent’s use of the Disputed Domain Name in connection with a portal website associated with the Disputed Domain Name for the purpose of pointing to third party websites offering goods under the Trademark without authorization from the Complainant and for pointing to competing products also establishes the Respondent’s bad faith use of the Disputed Domain Name. See Tommy Bahama Group, Inc. v. Private Whois ,WIPO Case No. D2012-0197.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy, thus paragraph 4(a)(iii) of the Policy is met. 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.
Jacques de Werra
Sole Panelist
Date: November 18, 2013
Full & Egal Universal Law Academy