WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tommy Bahama Group, Inc. v. Berno Group International
Case No. D2012-0531
1. The Parties
The Complainant is Tommy Bahama Group, Inc. of Atlanta, Georgia, United States of America (“U.S.”) represented by Kilpatrick Townsend & Stockton LLP, U.S.
The Respondent is Berno Group International of Pittsford, New York, U.S., internally represented.
2. The Domain Name and Registrar
The disputed domain name <tommybahamawatch.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), which was adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, and approved on October 24, 1999, and also in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) as approved on October 30, 2009 and the World Intellectual Property Organization (“WIPO”) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 14, 2009 (the “Supplemental Rules”).
The Complaint (with accompanying Exhibits A to K) was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on March 15, 2012.
Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center as the ICANN approved administrative dispute resolution service provider to administer this UDRP administrative proceeding. Through the Complaint, the Complainant requested a single-member panel.
On March 16, 2012, the Center requested confirmation from the Registrar as to: whether the Registrar received a copy of the Complaint from the Complainant, contact and registrant information set forth in that Complaint relative to the disputed domain name, and whether the disputed domain name is indeed registered with the Registrar. The Center also requested the Registrar to specify: (a) the dates on which the registrant registered that disputed domain name (or acquired the registration) and when the registration will expire, (b) whether the Policy applies to the disputed domain name, (c) the language of the registration agreement, and (d) for confirmation that the disputed domain name will remain “locked“ during the proceeding.
Subsequently, on March 16, 2012, the Registrar responded to the Center through which the former stated that it had received a copy of the Complaint; confirmed it is the registrar for the disputed domain name; confirmed that the named respondent on the Complaint, as filed was the actual registrant of the disputed domain name; and provided contact information pertinent to the disputed domain name to the extent, as it then existed, in its WhoIs database. The Registrar’s response further indicated that: (a) the disputed domain name was registered on January 21, 2009 (the registrar also specified, in paragraph 9 of its verification, the actual date as being January 26, 2009, however that date appears to reflect a typographical error as the Registrar’s WhoIs information specifies this date as January 21, 2009), (b) the registration will expire on January 21, 2013, (c) the Policy applies to the disputed domain name, (d) the registration agreement is in English, and (e) the disputed domain name will remain locked during the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.
On March 20, 2012, the Center formally notified the Respondent of the filing of the Complaint, including an indication that the Center was forwarding a complete copy of the Complaint to the Respondent, together with all its Exhibits, by e-mail together with the Center’s “Written Notice of the Commencement of Administrative Proceeding”, the notice also being sent by courier. The Complaint and its accompanying documents were provided in the preferred manners and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.
Hence, the notification to the Respondent having occurred on March 20, 2012, under paragraph 4(c) of the Rules, this administrative proceeding is deemed to have commenced on that date.
Having reviewed the Complaint and all the correspondences, including that between the Center and the Registrar, the Panel agrees with the determination of the Center that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided with a 20 calendar day period, expiring on April 9, 2012 to file its Response with the Center and the Complainant.
On April 9, 2012, the Respondent filed its Response, via e-mail to the Center. Later the same day, the Center acknowledged, by e-mail letter to the parties, its receipt of the Response.
Pursuant to the Rules and Supplemental Rules, by e-mail letter dated April 13, 2012, the Center contacted the undersigned, Mr. Peter L. Michaelson, Esq., requesting his service as the sole panelist for this dispute. Later the same day, Mr. Michaelson accepted and, pursuant to the requirements of paragraph 7 of the Rules, returned by e-mail attachment to the Center a fully executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center, through an e-mail letter on April 16, 2012 notified the Parties of the appointment of Mr. Michaelson as sole Panelist. The Panel finds that it was properly constituted.
Based on the deadline set forth in paragraph 15 of the Rules, a decision is to be issued by the Panel by April 30, 2012. However, due to exceptional circumstances recently experienced by the Panel, the Panel extended the deadline to May 14, 2012.
This dispute concerns one domain name, specifically <tommybahamawatch.com>.
4. Factual Background
According to the public WhoIs database appearing in Exhibit A to the Complaint, confirmed by the Registrar as well as by Exhibit A to the Response, the disputed domain name was registered to the Respondent on January 21, 2009 and is set to expire on January 21, 2013.
A. Complainant’s TOMMY BAHAMA Marks
The Complainant owns numerous U.S. and foreign trademark registrations for TOMMY BAHAMA in block letters by itself, in conjunction with additional text, or in a stylized form and/or with a design element. The Complainant has provided a listing of all its U.S. registrations and copies of several of those registrations, a copy of what the Complainant apparently views as its U.S. registration most relevant to the present dispute, and a listing of all its foreign registrations in Exhibits E, F and G, respectively, to the Complaint. Pertinent details of the Complainant’s most relevant U.S. registration, followed by those of a small sample of its other U.S. registrations, are as follows:
1. TOMMY BAHAMA (block letters)
United States Registration No. 2,551,210
registered: March 19, 2002; filed: September 12, 2000
This mark is registered for use in connection with: “watches” in international class 14. Both first use and first use in commerce of the mark in conjunction with this good commenced as of October 2, 1996.
2. TOMMY BAHAMA (block letters)
United States Registration No. 2,771,892
registered: October 7, 2003; filed: December 30, 2002
This mark is registered for use in connection with: “tapers and candles” in international class 4, “writing instruments, stationary, greeting cards, self-adhesive notes, desk blotters, desk sets, photo albums” in international class 16; and “ashtrays, humidors, cigar cutters, cigarette and cigar lighters not of precious metals” in international class 34. Both first use of the mark and first use in commerce in conjunction with the goods in classes 4, 14 and 34 commenced as of August 31, 2001; August 15, 2001; and June 4, 2002, respectively.
3. TOMMY BAHAMA (block letters)
United States Registration No. 2,492,771
registered: September 25, 2001; filed: August 17, 2000
renewed: April 1, 2011
This mark is registered for use in connection with: “retail store services featuring clothing and general consumer goods” in international class 35. First use of the mark and first use in commerce in conjunction with these services commenced as of March 1, 1993 and February 29, 1996, respectively.
4. TOMMY BAHAMA (block letters)
United States Registration No. 1,802,812
registered: November 2, 1993; filed: August 13, 1992
renewed: January 8, 2004
This mark is registered for use in connection with: “Men’s, women’s, boys’, and girls’ clothing; namely, knit and woven shirts; knit and woven pants, shorts, and jeans; sweaters, jackets, vests, coats, rainwear, belts, hats, gloves, socks, scarves, ties, ascots, and neckerchiefs” in international class 25. Both first use of the mark and first use in commerce in conjunction with these goods commenced as of March 1, 1993.
Since at least as early as 1993, the Complainant has continuously and exclusively used its mark TOMMY BAHAMA in connection with its island-inspired apparel and related accessories. Over the years, the Complainant has expanded its branded line of products to include a “lifestyle” line of island-inspired accessories, including, e.g., footwear, swimwear, sunglasses, eye wear, wallets, bedding, sporting goods, fragrances, personal care products, home furnishings and watches.
The Complainant currently operates more than 98 TOMMY BAHAMA branded retail stores for its apparel and accessories in locations throughout the U.S. Through various arrangements, it also maintains over 16 TOMMY BAHAMA branded retail stores in Australia, Canada and Dubai. The Complainant also employs a network of independent sales representatives who are authorized to sell TOMMY BAHAMA branded apparel and accessories to various other retail outlets and corporate accounts, including resorts and spas, hotels, golf pro shops, and department store chains, such as Macy’s, Nordstrom, Hudson Bay Trading Co., Belk, and Von Maur. In fiscal years 2010, 2009 and 2008, the Complainant’s net sales of TOMMY BAHAMA branded goods and services were approximately USD 398 million, USD 421 million and USD 363 million, respectively.
As a complement to its retail stores, the Complainant also operates an interactive website at its domain name <tommybahama.com>. The website (a hard-copy print-out of its home page and several sub-pages appears in Exhibit D to the Complaint) features information about the Complainant’s TOMMY BAHAMA branded apparel and accessories, retail store and restaurant locations, and customer services and product care information.
Over the years, the Complainant has expended tens of millions of U.S. dollars promoting and marketing its goods and services under its TOMMY BAHAMA Marks, and as a result received considerable publicity in the U.S. and throughout the world.
Before the Complaint was filed, the disputed domain name appeared to be a portal or click-through website containing links to third-party websites, such as “www.amazon.com/tbwatch”, “www.squidoo.com/tommy-bahama”> and “www.internationaljock.com”, through which Internet users could obtain the Complainant’s goods and services, as well as those of others. Exhibit I to the Complaint provides a hard-copy printout of the home page of the Respondent’s site as that page existed on February 16, 2012. Once the Complaint was filed, the disputed domain name resolved to a completely blank page (as indicated, in Exhibit J to the Complaint, by a hard-copy printout of that particular page). Currently, the website is not operating.
The Respondent stated that its purpose in choosing and registering the disputed domain name flowed from answering its own question of “what do I want to sell” -- the result of which being the Complainant’s TOMMY BAHAMA branded products. Its website contained no suggestion that it was related to or operated by the Complainant. To sell those products, the Respondent became an “Amazon Associate”. Once the Respondent became such an associate, it gained access, through “www.amazon.com”, to a number of third-party vendors of the Complainant’s goods which, in turn, the Respondent promoted by including, on its own website, links to those vendors’ websites (though use of various tools, such as “Links & Banners”, “Widgets” and “aStore”, which are generally made available by “www.amazon.com” to its associates). The Respondent states that, up to the point it shut down its website, it derived no actual revenue or profit through that site.
5. Parties’ Contentions
(i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark TOMMY BAHAMA because the disputed domain name contains the formative term “Tommy Bahama” to which the term generic word “watch” has been prepended. Addition of the word “watch” fails to provide any distinctiveness to the disputed domain name that would sufficiently abate confusion of Internet users. In fact, since the Complainant distributes watches under its mark TOMMY BAHAMA, appending the word to the mark actually heightens the likelihood that such confusion will arise.
Hence, the Complainant believes that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The Complainant contends that, for various reasons, the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
First, the Complainant states that the Respondent registered the disputed domain name some sixteen years after the Complainant began use of its mark TOMMY BAHAMA with respect to apparel and related accessories, and seven years after the Complainant started using that mark in conjunction with watches. Consequently, given these long periods of time, the Respondent is unable to demonstrate that it has acquired any rights or legitimate interests in the name. Specifically, due to the Complainant’s long-standing exclusive trademark rights, the Respondent has not been commonly known as TOMMY BAHAMA and cannot do any business under that term.
Second, there is no relationship between the parties which has given rise to any license, permission or other right by which the Respondent could own or use any domain name which incorporates the Complainant’s mark TOMMY BAHAMA.
Third, prior to the time the Complaint was filed, the Respondent was using the disputed domain name to resolve to its website which displayed, on its home page, links to third-party vendors of goods of both the Complainant and others. Shortly thereafter, the Respondent terminated its website. This use did not constitute a bona fide attempt to offer goods or services to the public.
Fourth, the Respondent’s use of the name also does not constitute legitimate noncommercial or fair use, without any intent for commercial gain inasmuch as the Respondent made “no attempt to communicate via the disputed domain name”.
(iii) Registered and Used in Bad Faith
The Complainant contends that, for various reasons, the Respondent has registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Specifically, the Respondent registered and used the disputed domain name for commercial gain and to benefit from the goodwill and fame associated with Complainant’s TOMMY BAHAMA Marks. In that regard, the Respondent intentionally and opportunistically incorporated the mark TOMMY BAHAMA into the disputed domain name long after that mark became well-known to consumers of the Complainant’s branded goods. Once having done so, the Respondent then used the disputed domain name to resolve, either via a portal website or directly, to page of click-through links to third-party websites offering both the Complainant’s branded goods and goods of others.
Through the Response, the Respondent acknowledged that it chose the disputed domain name specifically because that name included the term TOMMY BAHAMA, as its express purpose was to sell the Complainant’s branded goods. The Respondent ultimately did so by becoming an Amazon associate through which it utilized its website to display links to the websites of various third-party vendors of those goods. The Respondent stated that, as long at its website operated, it derived no actual revenue or profit through that site.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s TOMMY BAHAMA Marks.
From a simple comparison of the disputed domain name to the Complainant’s mark TOMMY BAHAMA, no doubt exists that the disputed domain name is confusingly similar to the Complainant’s marks. The primary difference between the disputed domain name and the mark TOMMY BAHAMA is the addition of the generic word “watch” to form a separate corresponding composite term “tommybahamawatch” along with, secondarily, appending the gTLD (generic top level domain) “.com” to that term to form the disputed domain name, with the last addition being irrelevant in assessing confusing similarity or identity under paragraph 4(a) of the Policy and thus ignored.
It is now very well-established in UDRP precedent, including numerous decisions previously rendered by this Panel, that a minor variation, such as adding a short letter or number group, or even generic or highly descriptive words, or geographic identifiers, such as a country name, to a mark, is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion. Here, adding such a generic word, that being the term “watch”, in the manner which the Respondent specifically did, to the mark TOMMY BAHAMA clearly resulted in such a minor variation. See, particularly National Association of Realtors v. Hammerberg & Associates, Inc., WIPO Case No. D2012-0075; Space Needle LLC v. Erik Olson, WIPO Case No. D2011-0931; Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286; Clearwire Legacy, LLC v. Leon Ganesh, WIPO Case No. D2010-0148; Burberry Limited v. Domain Admin, WIPO Case No. D2009-0703; Krispy Kreme Doughnuts, Inc. v. John Sharp, WIPO Case No. D2009-0099; MasterCard International Incorporated v. Global Prepaid, WIPO Case No. D2008-2008; HRB Innovations Inc., Express Tax Service Inc. v. Calvin Brown, WIPO Case No. D2008-1072; Dreamworks Animation, LLC v. Creahq, Mike Furlong, WIPO Case No. D2008-0505; Marvel Manufacturing Company Inc. v. Koba Internet Sales, LP, WIPO Case No. D2008-0265; MySpace, Inc. v. Edwin De Jesus, EDJ Associates Inc., WIPO Case No. D2007-1878; BlackRock, Inc. v. blackrockfinancialservices.com, WIPO Case No. D2007-1627; F. Hoffmann-La Roche AG v. Transliner Consultants, WIPO Case No. D2007-1359; National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064; Toilets.com, Inc. v. Rons Porta Johns, WIPO Case No. D2007-0952; Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334; Gerber Childrenswear Inc. v. David Webb, WIPO Case No. D2007-0317; SPX Corporation v. Hevun Diversified Corporation, NAF Claim No. FA 791657; Google Inc. v. Jennifer Burns, NAF Claim No. FA 726096; The Cheesecake Factory Inc. and The Cheesecake Factory Assets Co., LLC v. Say Cheesecake, WIPO Case No. D2005-0766; Napster, Inc. v. Giovanni Vinscani, WIPO Case No. D2005-0531; Caesars Entertainment, Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411; Lockheed Martin Corporation v. The Skunkworx Custom Cycle, WIPO Case No. D2004-0824; Lockheed Martin Corporation v. Deborah Teramani, WIPO Case No. D2004-0836; National Collegiate Athletic Association v. Dusty Brown, WIPO Case No. D2004-0491; Lane-Labs USA, Inc. v. Powell Productions, NAF Claim No. FA 155896; and particularly Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Claim No. FA 117876.
Moreover, by including the generic word “watch” with the Complainant’s mark TOMMY BAHAMA to form the disputed domain name, the potential for user confusion is likely to be exacerbated, not reduced. It is quite conceivable, given current common naming conventions and patterns in use on the Internet, that an Internet user, who seeks information on watches distributed by the Complainant, but is uncertain of its associated domain name for use in accessing its website, would form a domain name by prepending the term “watch” to the term “TOMMY BAHAMA” to form a composite name and then add the common gTLD “.com” to yield a resulting domain name <tommybahamawatch.com>. The user would then insert that domain name into his/her browser with a reasonable expectation that doing so would direct that browser to either the Complainant’s website or a site authorized by the Complainant from which that user could obtain information for the Complainant’s branded watches. However, here the Respondent registered that domain name. The result is that the user’s action would cause that person not to be taken to the Complainant’s website, but rather, and without that user realizing the diversion, to the Respondent’s site instead. There, the user would be presented with various third-party links. The links were to web sites that displayed the Complainant’s goods, as well as third-party goods, and through which the user could presumably purchase any of those goods. Thus, the user would very likely be deceived into thinking that the Respondent’s site was affiliated with, authorized by or related in some fashion to the Complainant when, in fact, it was not. Hence, adding the term “watch” to the disputed domain name only heightens the likelihood of the Respondent causing user deception and ensuing confusion to the Respondent’s ultimate benefit and the detriment of Complainant. See Nat’l Assn. of Realtors, Space Needle, Burberry, Krispy Kreme, Dreamworks and MySpace, all cited supra.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s TOMMY BAHAMA Marks as to cause confusion; hence, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Based on the evidence of record here, the Panel finds that no basis exists which would appear to legitimize a claim by the Respondent to the disputed domain name under paragraph 4(c) of the Policy.
The Complainant has never authorized the Respondent to utilize any of the TOMMY BAHAMA Marks in conjunction with any of the goods and services in conjunction with which the Complainant uses any of those marks, nor does the Complainant apparently have any relationship or association whatsoever with the Respondent. As such, any use to which the Respondent were to put the Complainant’s mark TOMMY BAHAMA or one confusingly similar thereto in connection with the identical or even similar goods and services to those currently provided by the Complainant, in circumstances as are present here, may violate the exclusive trademark rights now residing with the Complainant. See, e.g., Amy Stran v. EzDomainSearch.com, Juan Curtis, WIPO Case No. D2011-1710; Space Needle, Oakley, Burberry, HRB Innovations Inc., Dreamworks, MySpace, Blackrock, F. Hoffmann-La Roche AG, National Football League, Toilets.com, Inc., and Associated Bank, all cited supra; also Starline Publications, Inc. v. Unity, WIPO Case No. D2008-1823; GoDaddy.com, Inc., v. GoDaddysDomain.com, Clark Signs, Graham Clark, WIPO Case No. D2007-0303; Citgo Petroleum Corporation v. Richard Antinore, WIPO Case No. D2006-1576; New Destiny Internet Group, LLC and Xplor Media, Inc. v. SouthNetworks, WIPO Case No. D2005-0884; The Cheesecake Factory Inc., Napster and Caesars Entertainment, Inc., supra; Pelmorex Communications Inc. v. weathernetwork, WIPO Case No. D2004-0898; Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615; Leiner Health Services Corp. v. ESJ Nutritional Products, NAF Claim No. FA 173362; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, cited supra; MPL Communications, Limited et al v. 1WebAddress.com, NAF Claim No. FA 97092; Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Claim No. FA 95856; and America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374. Consequently, in this Panel’s view, the Respondent could not legitimately acquire any public association between it and the mark TOMMY BAHAMA or even any mark similar thereto, at least for the goods (certainly including watches) and services provided by the Complainant under its marks.
Further, there is absolutely no evidence of record that the Respondent has ever been commonly known by the disputed domain name or more generally the mark TOMMY BAHAMA. Nor could the Respondent likely ever become commonly known by either the disputed domain name or the mark without infringing on the exclusive trademark rights of the Complainant. This is so in light of the Complainant’s exclusive trademark rights which date back sixteen years prior to when the Respondent registered the disputed domain name, and the widespread and substantial reputation and notoriety which the Complainant has gained in its TOMMY BAHAMA Marks ever since. See, e.g., Amy Stran, Space Needle, Oakley, Burberry, Starline Publications, HRB Innovations Inc., MySpace and Treeforms, Inc., all cited supra.
Hence, based on the evidence before the Panel, the Respondent does not fall within paragraph 4(c)(ii) of the Policy. Moreover, the facts of record do not indicate that the Respondent’s actions qualify under either paragraph 4(c)(i) or 4(c)(iii) of the Policy.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent’s actions, with respect to the disputed domain name, constitute bad faith registration and use.
Obviously, in light of the Respondent’s admission that it intentionally registered the disputed domain name because that disputed domain name included the Complainant’s mark TOMMY BAHAMA and the Respondent expressly wanted to use its website as a vehicle through which the Respondent would sell the Complainant’s TOMMY BAHAMA branded goods, the Respondent not only was clearly well aware of the Complainant and the Complainant’s popularity well before the Respondent registered the disputed domain name but also intentionally chose to opportunistically exploit that reputation for its own gain.
Though the Respondent had not derived any revenue or profit from its use of the disputed domain name when it terminated its website, nevertheless the Panel infers that, given the Respondent’s express desire to sell the Complainant’s branded goods, its intention was to eventually receive some type of commercial benefit, if not direct monetary revenue and profit, from those endeavors. Otherwise, the Panel sees no reason why the Respondent would have chosen the disputed domain name and proceeded to use the disputed domain name as it specifically did as an address of a page to third-party click-through links.
Unfortunately, for the Respondent, the Complainant initiated this proceeding prior to the Respondent realizing any commercial proceeds of its actions. Had the Complainant not acted when it did, the Respondent would most likely have eventually profited, and illicitly so, from having opportunistically exploited the Complainant’s goodwill and reputation in its TOMMY BAHAMA mark to the Respondent’s own pecuniary benefit and the Complainant’s detriment.
Hence, the Panel concludes that the Respondent violated paragraph 4(a)(iii) of the Policy specifically including paragraph 4(b)(iv) thereof.
Thus, the Panel concludes that the Complainant has provided sufficient proof of her allegations, with respect to the disputed domain name, to establish a prima facie case under paragraph 4(a) of the Policy upon which the relief she now seeks can be granted.
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel grants the relief sought by the Complainant. The disputed domain name <tommybahamawatch.com> is ordered to be transferred to the Complainant.
Peter L. Michaelson
Dated: May 7, 2012