The Complainant is Tommy Bahama Group, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2020. On March 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2020, 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 March 4, 2020, 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 March 6, 2020. 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 of the Complaint, and the proceedings commenced on March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2020. The Center appointed Eduardo Machado as the sole panelist in this matter on April 3, 2020. 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 manufacturer and retailer of casual, men’s, and women’s island-inspired apparel and related accessories, such as sportswear and activewear, denim, swimwear, and many others, operating under the TOMMY BAHAMA brand since 1993. The Complainant operates in more than 154 retail stores for its apparel, accessories, and home furnishing in several locations through the United States and in 34 international stores, located in Australia, Canada, Japan, and other countries. The Complainant also operates 17 restaurant-retails under the TOMMY BAHAMA brand in the United States and Japan. The Complainant is the owner of the TOMMY BAHAMA mark in several jurisdictions, such as United States Reg. No. 1802812 to cover goods in class 25. The Complainant’s earliest trademark registration dates back from 1993 (United States Reg. No. 1802812). The disputed domain name was registered by the Respondent on January 6, 2020. The disputed domain name resolves to a website advertising links to third-party websites. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its registered TOMMY BAHAMA mark considering that the disputed domain name reproduces the TOMMY BAHAMA mark in its entirety with the mere addition of the letter “u” between the terms “tommy” and “bahama”, which would constitute the practice of typosquatting, serving as a trap for unwary Internet users who mistype the Complainant’s mark to access the disputed domain name. Moreover, the Complainant argues that the Respondent lacks rights and legitimate interests in the disputed domain name since the Complainant’s TOMMY BAHAMA mark, incorporated in the disputed domain name, was first used in commerce and registered in the United States Patent and Trademark Office long before the Respondent’s registration and use of the disputed domain name, which would indicate that the Respondent was fully aware of the Complainant’s rights in the TOMMY BAHAMA mark. In addition, the Complainant alleges the Respondent cannot establish rights and legitimate interests in the disputed domain name, considering that the Respondent was never licensed or authorized by the Complainant to register nor use its TOMMY BAHAMA mark. The Complainant maintains that the Respondent’s registration and use of the disputed domain name is not connected to a bona fide offering of goods and services, since the disputed domain name currently redirects to a website that displays advertisements for other websites. In this sense, the Respondent’s use of the disputed domain name would not be considered legitimate noncommercial nor fair use or the disputed domain name. Furthermore, the Complainant claims that the Respondent has 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 TOMMY BAHAMA mark. According to the Complainant’s allegations, the fact that the Complainant’s TOMMY BAHAMA mark has been in use and registered for several years before the Respondent’s registration of the disputed domain name, which wholly reproduces the Complainant’s TOMMY BAHAMA mark, would by itself indicate the Respondent’s opportunistic bad faith in the registration and use of the disputed domain name. Lastly, the Complainant informed that the Respondent’s bad faith is also evidenced by the Respondent’s history in UDRP actions, having participated in 95 UDRP actions as the respondent, three of which have been brought by the Complainant related to the registration of domain names composed of the TOMMY BAHAMA marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain the requested relief. These elements are: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. 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, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1. As disclosed through Exhibits D, E, and G of the Complaint, the Complainant is the owner of trademark registrations for the TOMMY BAHAMA word mark and logo since at least November 1993. Moreover, the disputed domain name reproduces, in its entirety, the TOMMY BAHAMA mark, with the mere addition of the letter “u” between the terms “tommy” and “bahama”. In this regard, the Panel considers that the addition of the letter “u” in this case would not prevent the possibility of confusion with the Complainant’s TOMMY BAHAMA mark, and would rather be characterized as the practice of typosquatting, a practice by which a domain name consists of a common, obvious, or intentional misspelling of a trademark. See WIPO Overview 3.0, section 1.9. Additionally, the Panel reiterates that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded by the Panel in order to establish identity or confusing similarity between the disputed domain name and the Complainant’s trademark (see Topvintage.nl BV v. DOMAIN ADMIN,WIPO Case No. D2017-1019, “the various generic Top-Level Domains (“gTLDs”) in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only”; see also Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175). Thus, the Panel finds that paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel, can demonstrate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances include: (i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. No evidence has been presented that, before any notice of this dispute, the Respondent was using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business, or otherwise, by the disputed domain name. The uncontested evidence shows that the Complainant had well-known rights in its TOMMY BAHAMA mark at the time of the registration by the Respondent of the disputed domain name and that the Respondent nevertheless registered it. Thus, no rights or legitimate interest can be inferred from the registration of the disputed domain name. The Panel also finds that the Respondent’s use of the disputed domain name to advertise links to other websites also does not constitute a bona fide offering of goods and services nor a legitimate noncommercial use of the disputed domain name. In addition, the Complainant has never authorized, licensed, or permitted, in any way, the Respondent to register or use the disputed domain name, which entirely incorporates the Complainant’s TOMMY BAHAMA mark. Considering the evidence on file and that the Respondent failed to send a Response to the Complaint, the Panel finds that there are no elements suggesting that the Respondent has or might have had rights or legitimate interests in respect of the disputed domain name. The Panel, therefore, concludes that the condition established at paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith In order to facilitate assessment of whether the bad-faith element is established, paragraph 4(b) of the Policy provides the following non-exclusive scenarios: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the 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 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 the respondent’s website or location. The Panel finds that the circumstance described in paragraph 4(b)(iv) of the of the Policy fit those of the current proceeding. That is because, the TOMMY BAHAMA mark, registered by the Complainant in many jurisdictions before the registration of the disputed domain name, can be considered as distinctive and has been in use by the Complainant for many years and in several countries to cover a variety of goods and services. In this sense, it is unlikely that the registration of the disputed domain name - which includes the TOMMY BAHAMA mark in its entirety - would have been a coincidence and not an attempt by the Respondent to create a likelihood of confusion with the Complainant’s registered marks, and, therefore, attract Internet users to 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, “The disputed domain name was registered at a time when the reputation of the Complainant and its TOMMY BAHAMA trademark was well established in the relevant marketplace in multiple jurisdictions. The registration is by way of a deliberate typosquatting ploy and it is inconceivable that it came about without the Respondent being aware of the Complainant’s distinctive trademark.”). In this regard, the Panel also understands that the Respondent’s behavior in the registration and use of the disputed domain name amounts to the practice of typosquatting, previously mentioned in this decision, as the Respondent has entirely reproduced the Complainant’s TOMMY BAHAMA mark in the disputed domain name with the purposeful addition of the letter “u”, in order to obtain commercial gain with the misspelling of the Complainant’s mark by inattentive Internet users. The practice of typosquatting, a type of cybersquatting, is itself considered indicative of bad faith registration and use of a domain name (see Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo,WIPO Case No. D2019-1600, “[t]yposquatting itself is evidence of relevant bad faith registration and use”). The practice of typosquatting related to the Complainant’s TOMMY BAHAMA mark has been addressed by previous UDRP panels as indicative of bad faith registration of a domain name (see Tommy Bahama Group, Inc. v. Danny L,WIPO Case No. D2019-2397, “The registration of the disputed domain name is a clear example of typosquatting, where the Respondent hopes in some way to make a profit or disrupt the business of the Complainant from the inadvertent typing errors of Internet users who type the TOMMY BAHAMA trademark into their web browsers.”). Moreover, no evidence has been presented that the Respondent has any rights or legitimate interests in respect of the disputed domain name. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services. In addition, the fact that the Respondent has been using the disputed domain name to redirect to a website that displays links to other websites is also indicative of bad faith of the Respondent as it demonstrates that Respondent is most likely obtaining undue commercial gain with the disputed domain name, which entirely reproduces Complainant’s TOMMY BAHAMA mark. Finally, the Respondent has a history of registering domain names composed of third parties’ trademarks. As provided by the Complainant, the Respondent has been identified as a respondent in 95 UDRP actions; three of which have been brought by the Complainant against the Respondent related to the registration and use of domain names that reproduced or imitated the Complainant’s TOMMY BAHAMA mark. In this sense, no good faith can be inferred from the registration or use of the disputed domain name by the Respondent. The Panel thus concludes that the Respondent has registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Eduardo Machado
Sole Panelist
Date: April 15, 2020
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