WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tommy Bahama Group, Inc. v. Xue Bing, ES Network
Case No. D2014-0459
1. The Parties
The Complainant is Tommy Bahama Group, Inc. of Seattle, Washington, United States of America (the "USA"), represented by Kilpatrick Townsend & Stockton LLP, USA.
The Respondent is Xue Bing, ES Network of Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <tommybahamaoutletsale.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2014. On March 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default.
The Center appointed Alexandre Nappey as the sole panelist in this matter on May 19, 2014. 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, Tommy Bahama Group, Inc., is a company incorpated in Seattle, USA. Since 1993, the Tommy Bahama Group, Inc., has been using the trademark and service mark TOMMY BAHAMA in connection with an island-inspired apparel and related accessories (footwear, swimwear, sunglasses, eyewear, watches, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings).
Tommy Bahama presently operates more than 119 Tommy Bahama retail stores for its apparel and accessories in locations throughout the United States, with 31 of these stores being outlet stores, and through various arrangements has over 24 international Tommy Bahama retail stores in Australia, Canada, Dubai, Hong Kong, Japan, Macau, and Singapore.
Tommy Bahama also employs a network of independent sales representatives who are authorized to sell Tommy Bahama apparel and accessories to various other retail outlets and corporate accounts, including resorts and spas, hotels, golf pro shops, and upscale department store chains.
Tommy Bahama operates a website operated under the domain name <tommybahama.com>. This website features information about Tommy Bahama apparel and accessories, retail store and restaurant locations, and customer services and product care information.
The Complainant has exclusive rights in the trademark TOMMY BAHAMA. The United States Patent and Trademark Office ("USPTO") has issued Tommy Bahama more than 45 registrations for marks that consist in whole or in part of the TOMMY BAHAMA Mark, including Registration No. 3,198,912 of TOMMY BAHAMA for "camp shirts; golf shirts; hats; jackets; knit shirts; neckwear; pants; polo shirts; shirts; shoes; shorts; sweaters" and Registration No. 2,492,771 of TOMMY BAHAMA for "retail store services featuring clothing and general consumer goods."
The Complainant also owns numerous registrations for its TOMMY BAHAMA mark around the world, including in Australia, the Bahamas, Canada, the European Union, Japan, Mexico, Peru and the Philippines. Specifically in China, where Respondent is domiciled, Tommy Bahama owns over 22 registrations for marks that consist in whole or in part of the TOMMY BAHAMA Mark.
The Respondent is Xue Bing of Fujian in China. The disputed domain name <tommybahamaoutletsale.com> was registered by Respondent on February 8, 2014. Internet users are directed to a website on which the Respondent offers for sale a variety of products, which are referred to as Tommy Bahama products.
5. Parties' Contentions
The Complainant claims that the disputed domain name <tommybahamaoutletsale.com> is made up of the registered trademark TOMMY BAHAMA to which the descriptive terms "outlet" and "sale" have been added. They are therefore confusingly similar, by at the least creating initial interest confusion to the Complainant's registered trademarks TOMMY BAHAMA.
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates.
In particular, the Complainant states that the website to which the disputed domain name resolves is used to sell products that purport to be Tommy Bahama products. The Complainant submits that purporting to sell Tommy Bahama products does not give the Respondent the right to use the trademark TOMMY BAHAMA in the disputed domain name without the consent of the Complainant. The Complainant argues that the Respondent is not an authorized Tommy Bahama dealer and therefore does not have the right to use the trademark TOMMY BAHAMA in the disputed domain name.
The Complainant argues the unauthorized sale of products by the Respondent on a website that gives the impression of being a genuine website of the Complainant is not a bona fide use of the disputed domain name and that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant further states that the Respondent is involved in a pattern of registering domain names incorporating third party marks, which constitutes evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel holds that the disputed domain name <tommybahamaoutletsale.com> is confusingly similar to the Complainant's trademarks. The Respondent's incorporation of the Complainant's trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant's marks. See Tommy Bahama group Inc v. PrivateWhois Tommybahamoutlet.com, WIPO Case No. D2012-0197.
Mere addition of the descriptive terms "outlet" and "sale" as suffixes to the Complainant's mark fails to distinguish. By contrast, it may increase the likelihood of confusion. Consumers who visit <tommybahamaoutletsale.com> are likely to be confused and may falsely believe that the website at the disputed domain name is operated by the Complainant for selling Tommy Bahama-branded products online. See Pierre Balmain S.A. v. Oscar Lee, WIPO Case No. D2010- 2138 ("outlet" is a non-distinctive term commonly used in commercial circumstances referring to a place of business for retailing goods") (transferring domain name <balmainoutlet.com>).
Thus, the Panel finds that the additional suffixes are not sufficient to negate the confusing similarity between the disputed domain name and the TOMMY BAHAMA Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name <tommybahamaoutletsale.com>. The Respondent is not known by the disputed domain name and has no rights or legitimate interests in the Complainant's mark, or in the name Tommy Bahama. Nor does the Respondent have any authority, whether express, implied, or ostensible, by which to use the disputed domain name.
The Respondent has no connection or affiliation with Tommy Bahama and has not received any license or consent, express or implied, to use the Complainant's trademark in the disputed domain name or in any other capacity. See Yves Saint Laurent, S.A.S. v. WhoisGuard / University of Paris, Jacky Lee, WIPO Case No. D2013-0571 ("The sole known name 'YSL' is the name which belongs to Yves Saint Laurent. The Respondent is not a licensee of the Complainant. And it cannot assert it has any link with the involved name.") (transferring domain name <yslsale.com>).
In the light of the Complainant's unrebutted prima facie case and the use of the nearly-identical website to that of the Complainant at the disputed domain name, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name <tommybahamaoutletsale.com>.
C. Registered and Used in Bad Faith
The Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence provided and other relevant circumstances, that the Respondent has registered and is using the disputed domain name in bad faith.
First, it is highly likely that the Respondent is aware of the Complainant's numerous and registered trademark registrations in the name "Tommy Bahama" which is highly distinctive and widely protected.
Then, it is highly improbable for the Respondent to have used the disputed domain name for the purpose of selling clothes and accessories at the Respondent's website, without knowledge of the Complainant's mark. See J. Choo Limited v. Zhenqun Mo AKA mozhenqun, WIPO Case No. D2010-1937 ("[T]he Panel is convinced that the purpose of the Respondent's registration of the domain name is to capitalize on the goodwill of the trademark by merely registering the trademark as a domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its website. This behavior constitutes bad faith in registration and in use of the domain name.") (transferring domain name <jimmychoooutlet.org>)
Third, the very choice of that disputed domain name by the Respondent was most likely intended to create the impression that the Respondent was the Complainant, or was associated with the Complainant, or was authorized by the Complainant to use the disputed domain name. Given that the Respondent had no such authorization, the Respondent clearly acted in bad faith in registering and using the disputed domain name.
Furthermore, the Respondent's registration of a domain name which included the name of a quite famous trademark in the absence of any legal connection to the Complainant, or any right or legitimate interest in the name or in the Complainant's mark is strong evidence of bad faith. See Swarovski Aktiengesellschaft v. Whois Privacy Protection Service, Inc./ning ning, WIPO Case No. D2012-0979.
Lastly, the Respondent's bad faith use is confirmed by the fact that the disputed domain name directs Internet users to a variety of products such as men and women shirts, t-shirts, polos, jackets, jeans using an identical name to the Complainant's trademark and either "Tommy Bahama" products, or what appears to be imitations of them.
The Panel therefore finds that the Respondent registered and has been using the disputed domain name only for the purpose of attracting and misleading Internet users to its website for commercial gain and at the expense of the Complainant. See See Volvo Trademark Holding AB v. Franks Foreign Auto, WIPO Case No. D2004-0315 ("Respondent is operating its website using the Domain Name for commercial gain. This is quite clear from Respondent's website on which it provides the cost of the unauthorized VOLVO vehicle parts it sells and discusses shipping terms, ordering information and the like for its sale of those parts. Respondent's intent is not only to make a commercial gain, but to do so by attracting customers to its site by using the famous VOLVO mark, thereby misleading and deceiving them into believing its business and goods are somehow sanctioned or approved by Complainant and are genuine.") (transferring domain name <volvolamps.com>).
The Panel concludes that the Respondent has registered and used the disputed domain name <tommybahamaoutletsale.com> in bad faith.
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 <tommybahamaoutletsale.com> be transferred to the Complainant.
Date: June 9, 2014