Complainant is Tommy Bahama Group, Inc. of Seattle, Washington, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Tim Baele, BMG of Rochester, Michigan, United States, self-represented. 2. The Domain Name and Registrar
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 March 15, 2018. On March 16, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2018, the Registrar transmitted by e-mail to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2018.
The Center received two communications from Respondent on April 17, 2018 and April 20, 2018, respectively.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 1, 2018. 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
Since at least as early as 1993, Complainant has continuously and exclusively used the TOMMY BAHAMA mark in connection with its upscale island-inspired apparel and related accessories. Over the years, Complainant has expanded its TOMMY BAHAMA line of products to include a “lifestyle” line of island-inspired accessories, including, but not limited to, footwear, swimwear, sunglasses, eyewear, watches, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings. Complainant presently operates more than 146 Tommy Bahama retail stores for its apparel, accessories and home furnishings in locations throughout the United States, and through various arrangements has 21 international Tommy Bahama stores in Australia, Canada, Dubai, Japan, Hong Kong, China and China. Complainant also employs a network of independent sales representatives who are authorized to sell TOMMY BAHAMA apparel, accessories, and home furnishings to various other retail outlets and corporate accounts, including resorts and spas, hotels, golf pro shops, and upscale department store chains, such as Macy’s, Nordstrom, Hudson Bay Trading Co., Belk, and Von Maur. Additionally, Complainant operates 16 Tommy Bahama restaurant-retail locations in the United States and Japan.
In fiscal years 2017 and 2016, Complainant’s net sales of TOMMY BAHAMA goods and services approximated USD 685 million and USD 582 million, respectively. In fiscal years 2015 and 2014, Complainant’s net sales of TOMMY BAHAMA goods and services approximated USD 658 million, and USD 627 million, respectively. In fiscal years 2013 and 2012, Complainant’s net sales of TOMMY BAHAMA goods and services approximated USD 584 million and USD 528 million, respectively.
As a complement to Complainant’s retail stores, Tommy Bahama operates a heavily-trafficked, interactive website at the domain name (the “TOMMY BAHAMA Website”). This website features information about TOMMY BAHAMA apparel and accessories, retail store and restaurant locations, and customer services and product care information.
As a result of Complainant’s continuous and exclusive use of the TOMMY BAHAMA mark in commerce, Complainant owns valid and enforceable trademark and service mark rights in the TOMMY BAHAMA mark. In recognition of these rights, the United States Patent and Trademark Office (“USPTO”) has issued Complainant over 35 registrations for marks that consist, in whole or in part, of the TOMMY BAHAMA mark. For example, United States trademark registration TOMMY BAHAMA no. 1802812 registered on November 2, 1993. Complainant also owns numerous registrations for its TOMMY BAHAMA mark around the world, including in Australia, the Bahamas, Canada, China, the European Union, Japan, Mexico, Panama, Peru, the Philippines, South Africa, the Republic of Korea, Switzerland, the United Arab Emirates, Viet Nam, the Virgin Islands, Unincorporated Territory of the United States and the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name was registered on February 2, 2018 and according to evidence provided by Complainant it resolves to a website with pay-per-click links. 5. Parties’ Contentions A. Complainant
Complainant owns valid and enforceable trademark and service mark rights in the TOMMY BAHAMA mark for use in connection with apparel, accessories, and home furnishings, and Complainant acquired these rights well prior to the date on which Respondent registered the disputed domain name.
Consumers who see the disputed domain name are certain to associate the name with Complainant, because the disputed domain name incorporates the mark TOMMY BAHAMA in its entirety; in such cases, confusing similarity must be presumed.
The only difference between the TOMMY BAHAMA mark and the disputed domain name is the addition of the term “ville,” which is the modern French word of Latin origin meaning “city” or “town.” It is well established, however, that the addition of either a dictionary or geographic term does not affect a finding of confusing similarity and can, in some instances, actually increase the risk of confusion with Complainant’s trademark and with Complainant itself. The addition of geographic modifiers in no way diminishes the likelihood of confusion. Rather, as other UDRP panels have held, the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark.
Complainant’s first use and first registration of its TOMMY BAHAMA mark long predates any use Respondent may have made of the disputed domain name. Respondent is charged with constructive knowledge of Complainant’s prior use and trademark and service mark rights in the TOMMY BAHAMA mark. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating the TOMMY BAHAMA mark. Respondent has not been commonly known as “Tommy Bahama” or done business under that name. 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 structure of Respondent’s website indicates that it is a portal or click-through website from which Respondent receives revenues from third parties whose websites are accessed via the disputed domain name. Respondent’s use of the disputed domain name is not legitimate noncommercial speech because no attempt to communicate via the disputed domain name has been made. That Respondent registered the disputed domain name well after Complainant made extensive use of the TOMMY BAHAMA mark and that Respondent is not affiliated with Complainant and has not been authorized to use the TOMMY BAHAMA mark and/or sell TOMMY BAHAMA goods establishes that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has registered and is using the disputed domain dame in bad faith for commercial gain and to benefit from the goodwill and fame associated with Complainant’s TOMMY BAHAMA mark. Here, Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the disputed domain name purposefully incorporates the well-known TOMMY BAHAMA mark, and was registered long after this mark became well-known to consumers. Such registration and use of the disputed domain name is, in and of itself, a form of opportunistic bad faith. Respondent has used the disputed domain name for its own commercial gain; the disputed domain name points to a portal website offering links to a variety of other websites. The use of the TOMMY BAHAMA mark in the disputed domain name is bad faith use because the disputed domain name resolves to a website containing fashion-related advertising. When a domain name is so evidently connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests “opportunistic bad faith.”
Accordingly, Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent failed to file a formal Response in the proceeding. However, Respondent submitted two informal communications to the Centre on April 17, 2018 and April 20, 2018, after the period for a formal Response had concluded on April 11, 2018. In these communications, Respondent stated that he was working on a “proposal” for Complainant concerning the disputed domain name but did not receive any response from Complainant, that he has no plans to set up a website and sell Tommy Bahama merchandise, and that Complainant can buy the disputed domain name and reimburse Respondent’s costs. Respondent further indicated that he is a shareholder in Complainant’s parent company, as well as a large customer of Complainant. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant has provided evidence that it has rights in the TOMMY BAHAMA mark, which have been registered in the United States and elsewhere internationally, well before Respondent registered the disputed domain name. Complainant has also submitted evidence that the TOMMY BAHAMA mark is known globally in connection with its products, including various types of clothing, accessories and footwear, swimwear and home furnishings.
With Complainant’s rights in the TOMMY BAHAMA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s TOMMY BAHAMA mark because it incorporates this mark in its entirety as the dominant element of the disputed domain name. The addition of the descriptive or geographical term “ville” after the dominant TOMMY BAHAMA element does not distinguish the disputed domain name from Complainant’s mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the TOMMY BAHAMA mark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its TOMMY BAHAMA mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. Rather, Complainant contends that Respondent has used the disputed domain name in connection with a landing page through which Respondent collects click-through fees for directing Internet users to third-party websites. Such use of the disputed domain name does not constitute a bona fide use or legitimate interest in the disputed domain name. UDRP Panels have generally held that the use of a domain name containing a third-party trademark to collect click-through fees does not establish any rights or legitimate interests in the domain name by the registrant. WIPO Overview 3.0, section 2.9; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyG / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302.
Given that Complainant has established with sufficient evidence that it owns rights in the TOMMY BAHAMA mark, and given Respondent’s above noted actions and failure to file a formal response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
Assuming arguendo that the informal responses filed by Respondent could constitute a formal response, the substance of those responses fails to demonstrate that Respondent has any legitimate interest in the disputed domain name. Respondent admits to targeting Complainant for both an unspecified business “proposal” and an unspecified offer to sell the disputed domain name. Neither of these activities establishes any rights or legitimate interests in the disputed domain name by Respondent. C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As noted above, Complainant contends that Respondent is using the disputed domain name in connection with a website offering links to a variety of other websites, including those associated with competitors of Complainant, through which Respondent collects click-through fees. In the absence of any denial by Respondent, the Panel infers that through these activities Respondent is using a deliberately similar version of Complainant’s very well-known mark, and the significant goodwill and reputation associated with such mark, to misdirect Internet traffic for commercial gain. In light of the fame of the TOMMY BAHAMA mark, the fact that Respondent registered the disputed domain name without Complainant’s authorization long after Complainant’s rights in this well-known mark had been established, the Panel can only conclude that the disputed domain name was registered and used in bad faith.
Again, assuming arguendo that the informal responses filed by Respondent could constitute a formal response, the substance of those responses only serves as additional evidence that Respondent registered and is using the disputed domain name in bad faith. Respondent admits to targeting Complainant, with direct knowledge of the TOMMY BAHAMA marks, for both an unspecified business “proposal” and an unspecified offer to sell the disputed domain name.
Accordingly, the Panel finds that Complainant succeeds under this element 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 Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: May 23, 2018
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