The Complainant is Tommy Bahama Group, Inc. of Seattle, Washington, United States of America (“US”); represented by Kilpatrick Townsend & Stockton LLP, US.
The Respondent is Jeremie Calo of Winter Park, Florida/Provo, Utah, US. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2014, the Registrar 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 June 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2014.
The Center appointed Andrew J. Park as the sole panelist in this matter on July 10, 2014. 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 since 1993 in the US and in various other countries. The Complainant presently operates more than 120 TOMMY BAHAMA retail stores for its apparel and accessories in locations throughout the US, three of which are located in Orlando, Florida. It is the owner of numerous trademark registrations for the TOMMY BAHAMA trademark around the world, including the US, Australia, the Bahamas, Canada, China, the European Union, Japan, Macau, Mexico, Peru, the Philippines, Singapore and the United Arab Emirates. The Complainant uses the TOMMY BAHAMA trademark in connection with diverse types of apparel and accessories including hats, swimwear, footwear, 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 April 11, 2014, which is long after the first use and registration of the TOMMY BAHAMA trademark by the Complainant. As of July 27, 2014, the Disputed Domain Name resolves to a website that contains the following message: “WEBSITE CURRENTLY DOWN FOR MAINTENANCE. CHECK BACK SOON.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Name contains the TOMMY BAHAMA trademark owned by the Complainant. The Complainant contends that it has spent substantial time, effort, and money advertising and promoting the TOMMY BAHAMA trademark throughout the US, including three stores in Orlando, Florida, and has thus developed substantial goodwill in the TOMMY BAHAMA trademark.
The Complainant contends that the Disputed Domain Name is confusingly similar to the TOMMY BAHAMA trademark because it incorporates the TOMMY BAHAMA trademark in its entirety, and the addition of the geographic term “orlando” creates confusion rather than distinctiveness.
The Complaint contends that the Respondent has no legitimate interests or rights in the Disputed Domain Name because the Respondent has no connection or affiliation with the Complainant, or the products marketed and sold by the Complainant under the TOMMY BAHAMA trademark. The Complainant contends 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 Complainant further contends that the Disputed Domain Name appears to merely function as a parking webpage.
The Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith and with full knowledge of the TOMMY BAHAMA trademark. The Complainant contends that the Respondent’s registration of the Disputed Domain Name appears to have been with the sole intention to cause confusion with the Complainant and its business. According to the Complainant, such behavior amounts to “opportunistic bad faith.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Disputed Domain Name to the Complainant. Those requirements are that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
This element consists of two parts: First, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the TOMMY BAHAMA trademark based on both longstanding use as well as its many trademark registrations for the TOMMY BAHAMA trademark. A comparison between the Disputed Domain Name and the TOMMY BAHAMA trademark shows that the Disputed Domain Name is confusingly similar to it to the extent that it reproduces the entirety of the trademark. See, e.g., Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) (“The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.”)
The addition of the geographic term “orlando” 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 location where the Complainant operates three stores. See e.g., Karen Millen Fashions Limited v. Fei Teng,WIPO Case No. D2011-2173 (finding “the ‘sydney’ portion of the disputed domain name does not add distinction because it is a geographic term, specifically the name of a city in Australia”); see also J. Crew International, Inc. v. Li,WIPO Case No. D2011-0665 (June 5, 2011) (finding that the incorporation of “Canada” in the domain name did “nothing to minimize the risk of confusion”); Align Technology, Inc. v. Scott Krager,WIPO Case No. D2008-0299 (finding that “[n]one of the disputed domain names are identical to Complainant’s INVISALIGN mark, but each is confusingly similar to it” because “each disputed domain name begins with Complainant’s INVISALIGN mark in its entirety followed by … the name of a city in the U.S.”).
Finally, the addition of a generic Top-Level Domain (“gTLD”) such as “.com” after a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Under the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case. The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its TOMMY BAHAMA trademark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent does not appear to be making any legitimate use of the Disputed Domain Name for non-commercial activities. Indeed, the Respondent has not replied to the Complaint, providing or at least alleging in any other way any right or legitimate interest in the Disputed Domain Name. Moreover, the Respondent registered the Disputed Domain Name on April 11, 2014—long after the TOMMY BAHAMA trademark had become well-known and distinctive.
Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has 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; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel accepts the arguments of the Complainant that the Disputed Domain Name was registered and is being used in bad faith. There is no doubt that the Respondent knew or should have known about the Complainant’s trademark rights before registering the Disputed Domain Name. The only reasonable inference that can be drawn from the Respondent’s registration of the Disputed Domain Name is that the Respondent intended to cause confusion with the Complainant and its business. The Panel agrees with the Complainant that such behavior amounts to “opportunistic bad faith.” Such use of the Disputed Domain Name is neither legitimate, nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s trademark is evidence of bad faith. See, e.g., Compagnie Générate des Etablissements Michelin CGEM-Michelin & Cie, Michaelin Recherche et Technique S.A. v. Horoshiy Icorporated,WIPO Case No. D2004-0752.
Moreover, a finding of bad faith may be made where the Respondent knew or should have known of the registration and use of the trademark prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is the present case with the Respondent’s registration of the Disputed Domain Name many years after the Complainant registered its TOMMY BAHAMA trademarks in the United States and throughout the world. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).
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).”
For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainant has shown that the Disputed Domain Name has been registered and used in bad faith by the Respondent. 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.
Andrew J. Park
Sole Panelist
Date: July 27, 2014
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