The Complainant is Tommy Bahama Group, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is RaeAnna Reynolds, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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 November 3, 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 November 8, 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 November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2020. The Center appointed Anne Gundelfinger as the sole panelist in this matter on December 29, 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 Founded in 1993, the Complainant Tommy Bahama Group is an American maker and retailer of upscale island-inspired men’s and women’s apparel and accessories and home products. Since its founding, the Complainant has used the TOMMY BAHAMA mark (“Mark”) around the world in connection with a range of apparel, accessory, home furnishing, and lifestyle products. Currently, it operates more than 133 retail stores in the United States and 22 stores in major markets around the world under the TOMMY BAHAMA Mark. TOMMY BAHAMA branded products are also available in many other retail outlets including resort shops, spas, golf pro shops, and department stores such as Macy’s, Nordstrom, Belk, and Von Maur. The Complainant also operates an ecommerce website under the Mark at “www.tommybahama.com”. The Complainant’s revenues are well over half a billion dollars annually. The Complainant owns the United States Registration No. 1,802,812 in International Class 25 for various apparel and accessory products, dated November 2, 1993 and now incontestable. The Complainant also owns 37 additional registrations in the United States for a range of goods and services, as well as registrations in the European Union and over 50 additional countries. The disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its well-known and widely registered TOMMY BAHAMA Mark because the disputed domain name is nearly identical in visual appearance, meaning, and overall impression, with only immaterial differences. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Specifically, the Complainant asserts inter alia that (a) the Complainant has given no authorization for use of the disputed domain name, (b) the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services, (c) the Respondent’s use of the disputed domain name for an ecommerce website mimicking the Complainant’s own website fails to establish rights or legitimate interests and also demonstrates the Respondent’s bad faith registration and use, (d) the Complainant’s Mark is well-known and the Respondent clearly knew of and targeted the Mark in registering the disputed domain name, (e) the Respondent’s use of the disputed domain name is misleading and creates a likelihood of confusion as to the source or sponsorship of the Respondent’s website, enabling the Respondent to trade off of the Complainant’s mark and goodwill for its own financial gain, (f) the Respondent has a pattern of bad-faith registration and use of domain names using other well-known marks, and (g) the Respondent used a privacy service to shield their identity, which is further evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks 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. A. Identical or Confusingly Similar The disputed domain name wholly incorporates the Complainant’s TOMMY BAHAMA Mark along with the term “eu”, a common abbreviation for “European Union”. It is well-established that the addition of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287. Similarly, the addition of the generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark under the requirements of the Policy, and that the first element of the test is satisfied. B. Rights or Legitimate Interests It is well-established that a complainant must present a prima facie case in relation to the second element of the test, not mere allegations. Once a prima facie showing is made, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. This burden-shifting is appropriate given that the respondent is often the only party with access to evidence of its own rights or legitimate interests. Accordingly, where a respondent fails to file a response, a panel may draw inferences from the failure to respond as appropriate under the circumstances of the case and while still weighing all available evidence irrespective of whether a response is filed. See, section 2.1 of the WIPO Overview 3.0 and cases cited therein. See also, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here the Complainant has averred that there is no relationship between it and the Respondent, and that it did not authorize the Respondent’s use of the disputed domain name. The Complainant further argues that the Respondent is not commonly known by the disputed domain name and is not using it in connection with a bona fide offering of goods and services. Given the Respondent’s clear targeting of the Complainant’s well-known TOMMY BAHAMA Mark (discussed further below), it is difficult to see how the Respondent could have any legitimate interest in the disputed domain name. One could argue that if the Respondent were reselling genuine Tommy Bahama products under the disputed domain name, the Respondent might have some legitimate interest in making a nominative fair use under the fair use principles articulated in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. See also, section 2.8 of the WIPO Overview 3.0 and cases cited therein. However, in the absence of a response from the Respondent, we cannot tell whether the goods being sold by the Respondent are genuine or fake and therefore whether the Respondent is a legitimate reseller. Moreover, even if the goods being offered by the Respondent are genuine, the content of the website found at the disputed domain name does not otherwise satisfy the Oki Data fair use factors. The Respondent has not made any effort on the website to clarify its own identity or its relationship (or lack thereof) with the Complainant, but rather has done the opposite, positioning the website as an official Tommy Bahama Group website with its use of misleading TOMMY BAHAMA branding (discussed further below). Accordingly, based on the evidence before it, and in the absence of countervailing evidence from the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the test is satisfied. C. Registered and Used in Bad Faith The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because the disputed domain name resolves to a website that mimics the Complainant’s own website. The Panel agrees. The Respondent’s website copies the look of the Complainant’s website, uses TOMMY BAHAMA branding including the well-known TOMMY BAHAMA logomark mark in the upper left corner, and purports to sell genuine Tommy Bahama products. There is nothing on the website to suggest it is not an official website of the Tommy Bahama Group. In short, it is what is commonly known as a “fake website.” It is impossible to tell from the content of the Respondent’s website whether the Respondent sells genuine Tommy Bahama goods, counterfeit goods, or no goods at all, and the Complainant has submitted no evidence on this point. However, even if the Respondent is reselling genuine Tommy Bahama goods, the use of the Complainant’s Mark in the disputed domain name cannot be considered a good-faith fair use, given how misleading the website’s branding is. Prior panels have recognized the right of a reseller of genuine goods to make a “nominative fair use” reference to the mark in question in the disputed domain name if (among other things) the content of the website accurately and prominently discloses the registrant’s relationship with the trademark holder, and thereby also makes clear that the registrant’s website is not the site of the trademark holder. See, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and Section 2.8 of the WIPO Overview 3.0 and cases cited therein. However, these are not the facts we have before us. The Respondent has clearly targeted the Complainant’s Mark for commercial gain by creating a highly misleading “fake website” bearing the Complainant’s branding under the disputed domain name. This is the very essence of bad faith. There is also evidence that the Respondent has engaged in nearly identical bad faith behavior in connection with at least one other well-known retail apparel brand. See, Urban Outfitters Inc. v. Domain Administrator, PrivacyGuardian.org / RaeAnna Reynolds,WIPO Case No. D2019-1973, in which the Respondent was found to registered and used the domain name Finally, while not necessary to the finding, the Respondent’s use of a privacy protection service raises an inference of, and further supports a finding of, bad faith registration. See, section 3.6 of the WIPO Overview 3.0 and cases cited therein. Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and that the third element of the test is 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 Anne Gundelfinger
Sole Panelist
Date: January 4, 2021
Full & Egal Universal Law Academy