Complainant is Tommy Bahama Group, Inc., United States of America (the “United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Julian Dank, United States. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 7, 2019, 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 Complainant on June 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 26, 2019.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2019.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on July 25, 2019. 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
Complainant owns 38 trademark registrations in the United States for marks that consist, in whole or in part, of the mark TOMMY BAHAMA. The earliest of these registrations is United States registration No. 1,802,812 for the word mark TOMMY BAHAMA, which dates from November 2, 1993, and which was filed on (and is entitled to a claim of constructive use from) August 13, 1992. Complainant also owns registrations for the TOMMY BAHAMA mark in over 50 other countries.
The Disputed Domain Name was registered on April 25, 2019, and does not resolve to an active webpage. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has used the TOMMY BAHAMA Mark continuously and exclusively since at least 1993 in connection with its upscale island-inspired apparel and related accessories. Complainant asserts that it has expanded its TOMMY BAHAMA line of products to include a “lifestyle” line of island-inspired accessories including footwear, swimwear, sunglasses, eyewear, and other items.
Complainant asserts that it presently operates over 150 TOMMY BAHAMA retail stores for its branded products, including five stores in Miami, Florida. 34 TOMMY BAHAMA stores are also operated internationally through various arrangements with Complainant. Complainant asserts that it employs a network of independent sales representatives who sell TOMMY BAHAMA products to other retail outlets such as resorts, spas, hotels, golf pro shops, and upscale department stores. Further, Complainant asserts that it operates 17 TOMMY BAHAMA related restaurant/retail locations in the United States and Japan.
Complainant asserts that its net sales of TOMMY BAHAMA-branded goods for each fiscal year from 2013 through 2018 were in excess of one quarter of a trillion dollars. Similarly, Complainant’s net sales of TOMMY BAHAMA services for each fiscal year from 2013 through 2018 were in excess of one quarter of a trillion dollars.
Complainant asserts that it operates a heavily-trafficked, interactive website at the domain name , which features information about Complainant’s goods and services under the TOMMY BAHAMA mark.
Complainant asserts that it has spent tens of millions of dollars promoting and marketing its good and services under the TOMMY BAHAMA mark, resulting in an enormous amount of publicity for the goods and services in the United States and throughout the world.
Complainant asserts that no other person or entity anywhere in the world has a legitimate right to use the TOMMY BAHAMA mark in any form or manner.
Complainant asserts that the Disputed Domain Name is identical or confusingly similar to Complainant’s Mark because it owns valid and enforceable trademark and service mark right in the TOMMY BAHAMA Mark in connection with its goods and services, and Complainant acquired these rights well prior to Respondent’s registration of the Disputed Domain Name. Further, Complainant asserts that the Disputed Domain Name incorporates the TOMMY BAHAMA mark in its entirety, and therefore confusing similarity must be presumed. Complainant asserts that the only difference between the TOMMY BAHAMA mark and the Disputed Domain Name is the addition of the geographic term “Miami”. Complainant asserts that the addition of a geographic term does not affect a finding of confusing similarity and can, in some instances, actually increase the risk of confusion with Complainant’s mark and with Complainant itself.
Complainant asserts that this is particularly true where, as here, Complainant offers its services on a nationwide, and worldwide, basis, and where Complainant owns and operates multiple TOMMY BAHAMA stores in Miami, which is the geographic location incorporated in the Disputed Domain Name. Furthermore, Complainant asserts that the likelihood of confusion is greater where a geographic term is combined with a well-known mark to form the Disputed Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because Complainant’s rights in the TOMMY BAHAMA mark long pre-date Respondent’s registration of the Disputed Domain Name, and therefore the burden is on Respondent to establish rights or legitimate interests in the Disputed Domain Name. Therefore, Complainant asserts that Respondent is charged with constructive knowledge of Complainant’s prior use and trademark and service mark rights in Complainant’s Mark. Complainant asserts that there is no relationship between Complainant and Respondent giving rise to any license, permission or other right by which Respondent could own or use the Disputed Domain Name, that Respondent has not been commonly known as “Tommy Bahama”, or done business under that name; that Respondent’s use of the Disputed Domain Name is not in connection with a bona fide attempt to offer the goods or services to the public; but rather resolves to a page that shows the error “This site can’t be reached.” Furthermore, Complainant asserts that Respondent’s use of the Disputed Domain Name is not legitimate commercial speech because Respondent has made no attempt to communicate via the Disputed Domain Name.
Complainant asserts that in view of the extensive use and widespread recognition of the TOMMY BAHAMA mark, and the fact that Respondent has no rights in this mark, Respondent is using the Disputed Domain Name for profit, and not for any legitimate noncommercial or fair use purpose. Complainant asserts that such use of the Disputed Domain Name does not constitute a legitimate, bona fide offering of goods or services.
Complainant asserts that Respondent registered and is using the Disputed Domain Name in bad faith because the Disputed Domain Name purposefully incorporates Complainant’s well-known TOMMY BAHAMA Mark and was registered long after the mark became well-known to consumers, constituting opportunistic bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [respondent has] registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) [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 [respondent has] engaged in a pattern of such conduct; or
(iii) [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, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
According to paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests to a domain name by any of the following, without limitation:
“(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”
Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Findings 1. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s TOMMY BAHAMA mark. The Disputed Domain Name reproduces the TOMMY BAHAMA mark its entirety, adding only the geographical term “Miami”. The Panel notes in particular Complainant’s five retail locations in Miami, Florida. See IKEA Systems B.V. v. Jose Delfino,WIPO Case No. D2014-2070 (inclusion of geographical term “Miami” to complainant’s mark does nothing to distinguish disputed domain name, and exacerbates degree of potential confusion considering complainant has a store in Miami); Network of Indian Professionals of North America, Inc. v. Ilya Proxorov,WIPO Case No. D2011-2297 (adding geographical term “Miami” to complainant’s mark more likely to give rise to confusion).
The Panel finds that Complainant has established paragraph 4(a)(i) of the Policy. 2. Rights or Legitimate Interests
Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent has no license, permission, or other right to own or use the Disputed Domain Name, that Respondent has not been commonly known as “Tommy Bahama”, or done business under that name; and that Respondent’s use of the Disputed Domain Name is not in connection with a bona fide attempt to offer the goods or services to the public. Furthermore, the Disputed Domain Name is not being used in a legitimate commercial speech because Respondent has made no attempt to communicate via the Disputed Domain Name. See Tommy Bahama Group, Inc. v. Registration Private, Domains by Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-0197 (webpage does not constitute legitimate commercial speech by stating “This page isn’t working…”). See also Adidas AG v. Domain Manager, WIPO Case No. D2014-1414 (Respondent’s use of disputed domain name is not legitimate commercial speech because no attempt has been made to communicate via the disputed domain name).
Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See Adidas AG, supra,WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), Section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name. Furthermore, because Respondent failed to file a Response, the Panel may make an inference that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000‑1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy. 3. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(ii) of the Policy, namely that Respondent has registered and is using the Disputed Domain Name in bad faith because the Disputed Domain Name purposefully incorporates Complainant’s well-known TOMMY BAHAMA Mark and was registered long after the mark became well-known to consumers, constituting opportunistic bad faith.
First, although Complainant’s allegations and evidence were sufficient to find that Complainant’s TOMMY BAHAMA mark is well-known, the Panel notes that it is not the first Panel to reach this conclusion. See, e.g., Tommy Bahama Group, Inc. v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-0195,WIPO Case No. D2019-0197, andWIPO Case No. D2019-0198; Tommy Bahama Group, Inc. v. Tim Baele, BMG,WIPO Case No. D2018-0573; Tommy Bahama Group, Inc. v. James Shepard,WIPO Case No. D2015-1157; Tommy Bahama Group, Inc. v. Jeremie Calo,WIPO Case No. D2014-0866;
Second, by registering a domain name incorporating Complainant’s well-known trademark in the Disputed Domain Name in its entirety, at a time when Complainant had long established its reputation and its TOMMY BAHAMA mark, Respondent has registered the Disputed Domain Name in bad faith. See Tommy Bahama Group, Inc. v. Registration Private, id.; PIERRE BALMAIN S.A. v. Oscar Lee,WIPO Case No. D2010-2138; J. Choo Limited v. Zhenqun Mo AKA mozhenqun,WIPO Case No. D2010-1937;
Third, even if the Disputed Domain Name had arguably been passively held, this fact alone is not sufficient to avoid a finding of bad faith. Rather:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or `coming soon´ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. WIPO Overview 3.0, Section 3.3.
The Panel finds that all four of the factors to be considered hereinabove weigh in Complainant’s favor. As a result, the Panel finds that Respondent has registered and is using the Disputed Domain Name in bad faith. 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.
Jordan S. Weinstein
Sole Panelist
Date: August 12, 2019
Full & Egal Universal Law Academy