The Complainant is Tommy Bahama Group, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is xiaofeng Cai, Dragon, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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 the Complainant on October 24, 2019, 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 in English on October 30, 2019. On October 24, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 5, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 the Respondent, in English and Chinese, of the Complaint, and the proceedings commenced on November 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2019. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 20, 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 The Complainant is a company active in the fashion and furniture sectors, headquartered in the United States. The Complainant mainly markets island-inspired apparel and accessories, including furniture. At present, the Complainant operates more than 154 retail stores throughout the United States. In addition, the Complainant also operates 34 international stores in regions including the Respondent’s home jurisdiction China. The Complainant also commercializes its products through the Internet and via a network of independent sales representatives. The Complainant has a large online and offline operations, stating that in fiscal year 2018, its net sales of TOMMY BAHAMA-branded goods and services approximated 675 million United States Dollars. The Complainant owns a large trademark portfolio (including word and device marks) with registrations in a large number of countries and regions protecting TOMMY BAHAMA, including, amongst others, the following trademark registrations: United States trademark registration number 1,802,812, registered on November 2, 1993; and Chinese trademark registration number 1219615, registered on October 28, 1998. The disputed domain name was registered on July 6, 2019, and leads to an active page, offering gambling services and lotteries. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for TOMMY BAHAMA, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant contends that its trademarks are famous and well regarded in the fashion and furniture sector, and provides evidence of its marketing materials and business information, including the contents of its official website. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active webpage offering gambling services and lotteries. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes use in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant stated in its comments on the language of the proceeding that the Registrar’s address is in China and that the language of the Registration Agreement may be Chinese. Nevertheless, the Complainant filed its Complaint and amended Complaint in English, and requests that the language of proceedings be English. In considering the Complainant’s request that the language of the proceeding be English, the Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); the fact that the disputed domain name is in English and that the Complainant provides evidence that the Respondent has registered numerous domain names containing English terms, so that the Panel concludes that the Respondent is able to understand and communicate in English; and the fact that Chinese as the language of the proceeding could lead to unwarranted costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English. 6.2. Discussion and Findings on the merits The Policy requires the Complainant to prove three elements: (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. Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in its TOMMY BAHAMA marks, based on the use and registration of the same as trademarks by the Complainant, incidentally many years prior to the registration of the disputed domain name. Moreover, as to identity or confusing similarity of the disputed domain name with the Complainant’s marks, the disputed domain name consists of two elements, being the components “tommybahama” and “lamps”. The first component “tommybahama” is identical to the Complainant’s trademarks. As to the second component, “lamps”, the Panel considers that this component is a merely descriptive dictionary term, describing a type of product, and can therefore not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademarks, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s TOMMY BAHAMA trademarks, and that the Complainant has satisfied the requirements for the first element under the Policy. B. Rights or Legitimate Interests The Complainant has demonstrated that the Respondent is not (and has never been) an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. To the contrary, the Respondent is actively using the disputed domain name, which is confusingly similar to the Complainant’s trademarks, to mislead Internet users into visiting the website linked to the disputed domain name, offering betting and lottery services. This shows the Respondent’s intention to divert consumers to the disputed domain name for commercial gain, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for TOMMY BAHAMA. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. Furthermore, the Respondent is not commonly known by the disputed domain name, and the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1). The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy. C. Registered and Used in Bad Faith The registration of the disputed domain name, which is confusingly similar to the Complainant’s trademarks, and which took place years after the first registration and use of the Complainant’s trademarks for TOMMY BAHAMA, is clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns, registered trademarks in TOMMY BAHAMA and had, at the time of registration of the disputed domain name, already built up a global reputation in these marks through extensive use, including in the Respondent’s home jurisdiction, China. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith. As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name is linked to an active website, offering mainly lottery and betting services for commercial gain. The Panel considers that this means that the Respondent is intentionally attempting to attract Internet users, for commercial gain, to the disputed domain name, by creating a likelihood of confusion with the Complainant’s trademarks. The Panel holds that this is clear evidence that the Respondent is using the disputed domain name in bad faith (see also WIPO Overview 3.0, section 3.1). Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under 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 Deanna Wong Wai Man
Sole Panelist
Date: January 3, 2020
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