Complainant is Tommy Bahama Group, Inc., United States of America (“United States” or “US”), represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is Diana Balsama, 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 March 27, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 7, 2021 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 April 8, 2021. 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 April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. On April 11, 2021, Respondent sent to the Center an email which stated that she was willing to transfer the Domain Name to Complainant. On April 12, 2021, the Center invited Complainant to submit a request for suspension by April 19, 2021. On April 19, 2021, Complainant also sent to Respondent an email inviting a settlement. On April 23, 2021, Respondent sent an email denying Complainant’s allegation of bad faith and reiterating her willingness to transfer the Disputed Domain. Complainant did not submit a suspension request. Accordingly, the Center notified the commencement of Panel appointment process on May 20, 2021. The Center appointed John C. McElwaine as the sole panelist in this matter on May 26, 2021. 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. As mentioned above, Respondent has sent several email communications. Neither the Policy nor the Rules grant parties the right to submit additional evidence or arguments unilaterally, outside of the Complaint and Response. However, paragraph 12 of the Rules does grant this Panel the discretion to request further statements or documents from the parties. Paragraph 10 of the Rules grants this Panel the discretion to conduct these proceedings as it deems appropriate under the Policy and the Rules. Rule 10 also charges this Panel to treat the Parties “with equality” and that to conduct these proceedings with “due expedition”. See Rules, ¶ 10(a) and (b). Because Respondent is unrepresented, and because extensive proceedings would impose unnecessary cost on the Parties and the Center, this Panel finds it appropriate to consider Respondent’s emails in disposing of this case. Cf. Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207 (considering a respondent’s emails in disposing of the case). This decision details those emails in section 5.B., below. 4. Factual Background Complainant is Tommy Bahama Group, Inc., a Delaware corporation. Complainant owns the TOMMY BAHAMA mark in the United States. The United States Patent and Trademark Office (“USPTO”) has issued to Complainant at least 39 registrations of the TOMMY BAHAMA mark, or slight variations, (the “TOMMY BAHAMA Mark”), including United States Registration No. 1802812 registered on November 2, 1993, covering various men’s, women’s, and children’s clothing in International Class 25. Complainant also owns over 50 international registrations for the TOMMY BAHAMA Mark. Respondent is an individual residing in the United States. On February 15, 2021, the Domain Name was registered using Respondent’s registration services. The Domain Name displays a website that reads “[ Complainant asserts that it has used the TOMMY BAHAMA Mark exclusively and continuously since 1993. Complainant states that it uses the TOMMY BAHAMA Mark in connection with its line of “island-inspired accessories”. Complainant claims to operate 133 Tommy Bahama retail stores in the United States and 22 international Tommy Bahama stores. Complainant also notes that authorized representatives sell Tommy Bahama brand goods in various contexts such as department stores. Complainant claims ownership of the domain name Complainant claims that it has spent tens of millions of dollars to promote and market its goods and services, which have received large amounts of publicity in the United States and throughout the world. Complainant states that the TOMMY BAHAMA Mark and its associated goodwill are substantially valuable to Complainant. Regarding the Policy’s first element, Complainant alleges that the Domain Name is identical or confusingly similar to the TOMMY BAHAMA Mark because the Domain Name wholly incorporates the TOMMY BAHAMA Mark. Complainant argues that Respondent’s addition of the generic term “clothes” does not sufficiently distinguish the Domain Name from the TOMMY BAHAMA Mark because it is the dominant element of the Domain Name. Further, Complainant argues that Respondent’s addition of the term “clothes” increases the likelihood of confusion because Complainant sells clothes. Regarding the Policy’s second element, Complainant alleges that its use of the TOMMY BAHAMA Mark for 25 years previous to Respondent’s registration of the Domain Name shifts the burden to Respondent to prove that she has a right to use or a legitimate interest in the TOMMY BAHAMA Mark. Complainant argues that Respondent cannot make such a showing for three reasons. First, Respondent has no legal relationship with Complainant granting any kind of right in the TOMMY BAHAMA Mark. Second, Respondent conducts no legitimate business under the name “Tommy Bahama Clothes”, and thus cannot prove that Respondent is known by the Domain Name. Third, Respondent is not using the Domain Name to offer goods and services to the public, because the Domain Name is parked and displays only advertising links. Regarding the Policy’s third element, Complainant alleges that Respondent registered and used the Domain Name in bad faith because the Domain Name is confusingly similar to the TOMMY BAHAMA Mark. Complainant further alleges that the Domain Name’s display of advertising links demonstrates Respondent’s bad faith because it shows that Respondent registered the Domain Name to trade off the goodwill of the TOMMY BAHAMA Mark. Finally, Complainant argues that Respondent’s use of a registration privacy service supports a finding of bad faith. Complainant asks this panel to transfer the Domain Name to Complainant. B. Respondent Respondent did not file a formal reply to Complainant’s contentions. However, as stated in section 3, above, Respondent sent several emails to the Center. Although those emails are detailed below, the Panel first notes that Respondent disputes only Complainant’s allegation of bad faith. In an email dated April 9, 2021, Respondent admitted to purchasing the Domain Name through Registrar. Respondent claimed to be surprised by the availability of the Domain Name because the Tommy Bahama name is well-known. In another email dated April 11, 2021, Respondent insisted that she did not act with the intention to cause economic harm, to cybersquat, or to sell Complainant’s merchandise. Respondent stated her belief that the Tommy Bahama name must have been defunct, since Registrar was offering the Domain Name for purchase. Respondent wrote that she was “very familiar” with Search Engine Optimization and understood “the value of words and phrases and branding, etc., when it comes to building traffic” for websites and online businesses. Respondent stated that, because she believed the Tommy Bahama name to be defunct, her plan was to purchase the Domain Name, hold it until it became valuable, and sell it at a profit. Recognizing that Complainant was requesting transfer of the Domain Name, Respondent wrote that she “had] no problem doing that” — “whoever wants [the Domain Name] can have it, and [Respondent] would like to be able to walk away with [sic] this with a warning”. In another email dated April 23, 2021, Respondent again insisted that she “did not care to keep the domain and … gladly RELINQUISH[ED] ANY FORMAL RIGHT, MEANING MY RIGHT FROM PURCHASING THE DOMAIN, TO THE COMPLAINANT”. (capitalized in original). Respondent further stated that she would “WILLINGLY GIVE THE DOMAIN TO THE COMPLAINANT[.]” (capitalized in original). Again, Respondent emphasized that she “D[ID] NOT WANT THE DOMAIN! IT IS RIGHT … TO GIVE IT BACK[.]” (capitalized in original). Since “[Respondent] offered the domain back[,]” Respondent wondered “why is this even proceeding further when [she] g[a]ve no fight?” Respondent also wrote a second email on April 23, 2021. There, Respondent reaffirmed her willingness to transfer the Domain Name to Complainant. Respondent wrote that she “really just want to let the COMPLAINANT take the funding [sic] DOMAIN”. (capitalized in original). Finally, in an email dated May 10, 2021, Respondent once again affirmed that she wanted to “come to a resolution” with Complainant. Respondent promised to respond to Complainant that day by 4:00 P.M., EST. No further communication from Respondent is on file. 6. Discussion and Findings A. Respondent’s Consent to Transfer In a normal case, a complainant must comply with the Policy and prove its assertions with actual evidence demonstrating the following: (i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; See Policy, paragraph 4. However, where parties to a UDRP dispute have not settled their dispute prior to a panel decision, but the respondent has given clear and unambiguous consent to the complainant’s requested remedy, a panel generally has discretion to grant the complainant’s requested remedy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.10. “In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).” See also Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207 (granting relief where the respondent consented, despite no formal settlement agreement by the parties). Thus, this Panel could grant relief based on Respondent’s consent alone. Nevertheless, despite a respondent’s consent to the complainant’s requested remedy, some panels have still issued substantive discussions on the merits of the case. See, e.g., Arnold Clark Automobiles Limited v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM,WIPO Case No. D2016-2035 (discussing the merits of the case despite respondent’s consent where respondent had been party to several previous UDRP proceedings). Panels have discussed the merits of a case despite respondent consent in the following situations: (a) The panel finds that there is a broader interest in recording the discussion of the case on its merits. See WIPO Overview 3.0, paragraph 4.10 (collecting cases). Here, this Panel finds that there is no particular reason justifying recording the discussion of the case under (a). In its emails to Respondent and the Center, Complainant expressed interest in settling this case prior to these proceedings; thus, there is no grounds for an inquiry under (c). Nor is there any ambiguity in the scope of Respondent’s consent under (d): Respondent has clearly, unambiguously, and repeatedly stated that she has relinquished any right in the Domain Name, that she would willingly transfer the Domain Name to Complainant, and that it would be right for her to transfer the Domain Name to Complainant. Therefore, this Panel would be justified in ordering transfer on Respondent’s consent alone. However, because Respondent has disclaimed any bad faith conduct, and because the Rules impose a burden of proof on Complainant, this Panel will also discuss the merits of this case. B. Identical or Confusingly Similar Complainant has provided evidence to prove its rights in the TOMMY BAHAMA Mark by a preponderance of the evidence. See Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (applying the preponderance of the evidence standard and finding that “a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence”). In fact, all the evidence here points to Complainant’s right in the TOMMY BAHAMA Mark, and Respondent does not dispute Complainant’s rights. Thus, the only question before this Panel is whether the Domain Name is identical or confusingly similar to the TOMMY BAHAMA Mark. Numerous panels have established that domain names are confusingly similar to a trademark where the domain name wholly incorporates the trademark. See, e.g., Instagram, LLC v. Mohammed Arshad, CelebLook,WIPO Case No. D2020-2224 (finding a domain name confusingly similar to a trademark “because it incorporates [the trademark] in its entirety”). The addition of terms such as “clothes” does not eliminate the confusion. See id. (“The addition of the word ‘clothing’ does not dispel confusing similarity”. (citing WIPO Overview 3.0, paragraph, 1.8)). Further, when a term is related to the goods traded under the trademark, the term may add to the confusion. Cf. Christian Dior Couture v. Versata Software, Inc.,WIPO Case No. D2009-0102 (finding that the inclusion of the word “watch”, which was one of Complainant’s products traded under the trademark, would “add to the confusing similarity”). Here, the Panel finds that the Domain Name wholly incorporates the TOMMY BAHAMA Mark. The only additional term in the Domain Name is “clothes”, which is descriptive of the goods traded under the TOMMY BAHAMA Mark. See accord Herno S.p.A. v. Melissa Birkholz,WIPO Case No. D2020-0162 (finding that the “mere addition” of the word “clothing” did not avoid confusing similarity between the domain name and the trademark). Therefore, this Panel holds that Complainant has satisfied paragraph 4(a)(i) of the Policy; the Domain Name is confusingly similar to the TOMMY BAHAMA Mark. C. Rights or Legitimate Interests Rather than complete the “impossible task of proving a negative”, a complainant must only make a prima facie showing that a respondent lacks rights or legitimate interests with respect to a disputed domain name. WIPO Overview 3.0, paragraph 2.1 (internal quotation marks omitted). Once the complainant makes its prima facie case, the burden of production then shifts to the respondent to show evidence demonstrating rights or legitimate interests in the domain name. Id. When a respondent fails to meet this burden, the complainant has satisfied the second element. Id. In the absence of a response, a panel may accept reasonable inferences and allegations in the complaint as true. OSRAM GmbH v. Mohammed Rafi/Domaiin Admin, Privacy Protection Service INC d/b/a/ PrivacyProtect.org,WIPO Case No. D2014-1149. Here, this Panel finds that Complainant has made its prima facie case. As discussed in section 5.B., above, this Panel finds that Complainant has rights in the TOMMY BAHAMA Mark. Complainant has asserted that it has in no way granted a legal right in the TOMMY BAHAMA Mark to Respondent and that there is no relationship between the Parties. This Panel finds Complainant’s assertions credible. Specifically, this Panel finds it appropriate to infer that Complainant would not grant a license to an individual with whom they have no business relationship. Thus, the burden of production shifts to Respondent. Further, this Panel finds that Respondent has not attempted to produce any evidence of a right or legitimate interest in the TOMMY BAHAMA Mark. This failure to comply with the Rules would be enough for this Panel to find that Respondent has no rights or legitimate interests in the Domain Name. However, Respondent has also explicitly disclaimed “any right” in the Domain Name. Therefore, this Panel holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy; Respondent has no rights or legitimate interests with respect to the Domain Name. D. Registered and Used in Bad Faith The Policy provides that a respondent has registered and used a domain name in bad faith where, among other things, circumstances indicat[e] 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 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[.] Policy, paragraph 4(b)(i). Although the Policy’s list of scenarios is non-exhaustive, the presence of a single scenario from that list proves that the respondent registered and used the domain name in bad faith. See Policy, paragraph 4(b) (“[T]he following circumstances, … if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith[.]”); seealso WIPO Overview 3.0, paragraph 3.1 (noting that the Policy “provides that any one of the … non-exclusive scenarios constitutes evidence” of bad faith). Here, despite Respondent’s declarations to the contrary, the Panel finds that Respondent did register and use the Domain Name in bad faith. Respondent admits that she recognized the value of the TOMMY BAHAMA Mark in the Domain Name. Respondent also explicitly stated that her purpose in registering the Domain Name was to hold the domain name and “then list it and sell it at some later date should it become valuable again”. Thus, Respondent effectively admits that her purpose in registering the Domain Name was to sell it to Complainant for a profit. Therefore, this Panel finds that Respondent’s admissions satisfy paragraph 4(a)(iii) of the Policy; Respondent registered and used the 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 Domain Name John C McElwaine
(ii) The respondent has no rights or legitimate interests in the domain name; and
(iii) The respondent has registered and is using the domain name in bad faith.
(b) Despite consenting, the respondent has disclaimed any bad faith conduct.
(c) The complainant either has not agreed to accept the consent or has expressed a preference for a recorded decision.
(d) There is ambiguity in the scope of the respondent’s consent.
(e) The panel wants to ensure that the complainant has met its burden of proof.
Sole Panelist
Date: June 9, 2021
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