The Petitioner is Tommy Bahama Group, Inc., United States of America (“United Stares”), represented by Kilpatrick Townsend & Stockton LLP, United States.
2. Domain HolderThe Domain Holder is B.K.D.E., Sweden.
3. Domain Name and Procedural HistoryThis Alternative Dispute Resolution proceeding relates to the domain name
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (the “Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. The Center sent an invitation to amend the Petition on November 24, 2021. The Petitioner submitted an amended Petition on November 26, 2021. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on December 1, 2021. The Domain Holder did not submit a response.
The Center appointed Jon Dal as the sole arbitrator in this matter on January 5, 2022. The arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
The Petitioner elected to have the dispute decided as an Accelerated Proceeding if the Domain Holder does not respond to the Petition.
On January 6, 2022, the arbitrator notified the Petitioner of ambiguities in the Petition and allowed the Petitioner to submit a response by January 10, 2022 at the latest. The Petitioner submitted a response on January 6, 2022. The response was sent to the Domain Holder on January 7, 2022, and the Domain Holder was given until January 12, 2022, to submit a response. The Domain Holder did not submit a response.
Since the Domain Holder did not submit a response, the dispute shall be decided as an Accelerated Proceeding,
4. ClaimThe Petitioner claims that the Domain Name shall be transferred to the Petitioner.
The Domain Holder did not submit a response.
5. Parties’ Contentions 5.1 Petitioner A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rightsThe Petitioner is the owner of several European Union Trade Mark (“EUTM”) registrations for the TOMMY BAHAMA mark which are legally recognized in Sweden, including EUTM No 903138 TOMMY BAHAMA (word) registered on December 8, 1999. The Domain Name is similar to the Petitioner’s registered EUTM trademark for TOMMY BAHAMA.
B. The Domain Name has been registered or used in bad faithThe Domain Holder has registered and is using the Domain Name in bad faith for commercial gain and to benefit from the goodwill and fame associated with the Petitioner’s TOMMY BAHAMA mark. The Domain Holder’s bad-faith registration and use of the Domain Name is established by the fact that the Domain Name is nearly identical and/or confusingly similar to the well-known TOMMY BAHAMA mark, and was registered long after this mark became well-known to consumers. Such registration and use of the Domain Name is, in and of itself, a form of opportunistic bad faith. A non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. Given the fame of the Petitioner’s TOMMY BAHAMA mark and the other circumstances set forth herein, the Domain Holder’s actions are in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name.The Petitioner’s first use and first registration of its TOMMY BAHAMA mark long predates any use the Domain Holder may have made of the Domain Name. The Domain Name was registered initially on October 20, 2019, i.e. over 25 years after the Petitioner first used the TOMMY BAHAMA mark and registered its first federal trademark in the United States, and over 20 years after the Petitioner registered its first trademark with the EUIPO.
Since the Petitioner’s rights in the TOMMY BAHAMA mark long predate the Domain Holder’s acquisition of the Domain Name, the burden is on the Domain Holder to show established rights or justified interest in the Domain Name.
First, there is no relationship between the Petitioner and the Domain Holder, nor has the Petitioner authorized any license, permission, or other right by which the Domain Holder could own or use any domain name incorporating the TOMMY BAHAMA mark or a mark confusingly similar thereto.
Second, the Domain Holder cannot establish that it is commonly known by the Domain Name, as there is no indication that the Domain Holder has conducted any legitimate business under the name “Tommy Bahama.”
Third, the Domain Holder’s use of the Domain Name is not in connection with a bona fide attempt to offer goods and services to the public. The Domain Name does not resolve to an active web site and an inactive website does not establish any legitimate interests in the Domain Name.
In view of the extensive use and widespread recognition of the Petitioner’s mark, and the fact that the Domain Holder has no rights in this mark, the Petitioner reasonably believes that the Domain Holder is not using the Domain Name for any legitimate noncommercial or fair use purpose but for profit, which does not constitute a legitimate bona fide offering of goods or services. Moreover, the fact that the Domain Holder registered the Domain Name well after the Petitioner had made extensive use of the TOMMY BAHAMA mark establishes that the Domain Holder has no legitimate rights or justified interests in the Domain Name.
D. EvidenceThe Petitioner adduces as evidence, such as printouts from Petitioner’s web sites, chart of TOMMY BAHAMA trademark registrations etc.
5.2. Domain HolderThe Domain Holder has not submitted a response.
6. Discussion and Findings
A domain name may be transferred to the party requesting alternative dispute resolution proceedings if the following three conditions are fulfilled:
A. The domain name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
B. The domain name has been registered or used in bad faith, and
C. The domain holder has no rights or justified interest in the domain name.
All three conditions must be met in order for the party requesting alternative dispute resolution to succeed with a claim for transfer of the domain name.
A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rightsThe Petitioner is the registered owner of a EUTM registration for TOMMY BAHAMA (word). The trademark registration is legally recognized in Sweden. The Domain Name includes the Petitioner’s trademark TOMMY BAHAMA in its entirety. The Domain Name is, thus, similar to the Petitioner’s trademark.
B. The Domain Name has been registered or used in bad faithBased on the record, the arbitrator finds that the Domain Name has been registered and used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name.Based on the record, the arbitrator finds that the Domain Holder has no rights or justified interest in the Domain Name.
7. DecisionThe Domain Name shall be transferred to the Petitioner.
Jon Dal
Date: January 15, 2022