WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tommy Bahama Group, Inc. v. Cameron Jackson
Case No. D2015-0090
1. The Parties
The Complainant is Tommy Bahama Group, Inc., of Atlanta, Georgia, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Cameron Jackson of Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <tommybahamagroup.com> is registered with Instra Corporation Pty, Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2015. On January 21, 2015, the Center transmitted by email to Instra Corporation Pty Ltd. a request for registrar verification in connection with the disputed domain name. On January 21, 2015, Instra Corporation Pty Ltd. 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 February 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2015. No formal Response was filed with the Center however, on February 28, 2015 after notification of Respondent Default, an email communication was received from the Respondent requesting documents be sent by DHL. This email had not been copied to the Complainant. The Center sent its reply to the email copying the Complainant on March 3, 2015.
The Center appointed James Bridgeman as the sole panelist in this matter on March 9, 2015. 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 is a Delaware corporation with a principal place of business in Seattle, Washington, United States of America and is the owner of a substantial portfolio of trademark registrations for the TOMMY BAHAMA mark including:
- more than 45 registrations in the United States of America for marks that consist in whole or in part of the TOMMY BAHAMA mark including: United States registration number 1,802,812 for mark TOMMY BAHAMA registered on November 2, 1993; and
- trademark registrations in other jurisdictions including Australia, the Bahamas, Canada, the European Union, Japan, Mexico, Peru and the Philippines including Australian trademark registration number 667583 for mark TOMMY BAHAMA registered on August 5, 1996.
The Complainant has an established Internet presence and maintains an interactive website at “www.tommybahama.com”.
The Complainant has a substantial business with more than 132 retail stores in the United States of America, over 27 retail stores in other jurisdictions including Australia, Canada, Dubai, Hong Kong, China, Japan, Macau, and Singapore and an international network of sales agents. In fiscal year 2013, Tommy Bahama’s net sales of TOMMY BAHAMA goods and services approximated USD584 million. In fiscal years 2011 and 2012, the Complainant’s net sales of goods and services bearing the TOMMY BAHAMA mark were approximately USD 452 and USD 528 million, respectively.
As no Response has been filed and the only information available about the Respondent on file is from the Complainant’s submissions, the WhoIs database and the above-mentioned emails received by the Center from a J. Reynolds having an email address at <[…]@gmail.com> which is the contact email for the disputed domain name registration on the public WhoIs database.
The disputed domain name <tommybahamagroup.com> was registered on November 15, 2014.
The Complainant has alleged and the Respondent has not denied that since 2005 the Respondent has been the unsuccessful respondent in eight UDRP proceedings:
BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd. v. Cameron Jackson, WIPO Case No. D2008-1338 (transferring the domain names <auriasdiamonds.info>, <bhpinnovation.biz>, <bhpinnovation.info>, <bhpinnovation.net>, <bhpinnovation.org>, <bhplimited.biz>, <bhplimited.info>, <ekatidiamondmine.biz>, <ekatidiamondmine.net>, <ekatidiamondmine.org>, <temco-alloys.biz>, <temco-alloys.info>, <temco-alloys.net>, <temco-alloys.org>);
Insurance Australia Group Limited v. Cameron Jackson, WIPO Case No. D2008- 0872 (transferring domain name <nrma.mobi>);
Alstom v. Cameron Jackson, WIPO Case No. D2007-1022 (transferring domain names <alstom¬belgium.info>, <alstom-china.info>, <alstom-europe.info>, <alstom-fiji.info>, <alstom¬france.info>, <alstom-global.info>, <alstom-honduras.info>, <alstom-newzealand.info>, <alstom-perth.info>, <alstoms.info>, <alstom-switzerland.info>);
Chocoladefabriken Lindt & Sprüngli AG v. Cameron Jackson, WIPO Case No. D2007-1290 (transferring domain names <lindtchocolates.biz>, <lindtchocolates.info>, <lindttruffles.info>);
International Organization for Standardization ISO v. Cameron Jackson, WIPO Case No. D2007-0700 (transferring domain names <iso15022.biz>, <iso15022.info> and <iso15022.net>).
5. Parties’ Contentions
The Complainant relies on its claimed rights in the above-listed registered trademarks and at common law through its claimed protectable goodwill and reputation that it has acquired through sales, advertising and promotion of apparel and related accessories bearing the TOMMY BAHAMA mark in the United States and throughout the world since 1993.
The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s TOMMY BAHAMA mark, arguing that confusing similarity must be presumed because the disputed domain name <tommybahamagroup.com> incorporates the TOMMY BAHAMA mark in its entirety. Citing the UDRP panel decisions in PepsiCo, Inc. v. PEPSI SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 and NCAA v. Kohlass, WIPO Case No. D2003-0551.
The Complainant points out that the only difference between the disputed domain name <tommybahamagroup.com> and the Complainant’s TOMMY BAHAMA mark is the addition of the generic term “group” and argues that it is well established that the addition of such a generic term does not diminish the likelihood of confusion. Citing the UDRP panel decisions in CLT-UFA v. Sean Gajadhar, WIPO Case No. D2000-0801; Hariri Foundation v. PARSDATA Corporation, WIPO Case No. D2009-1585; EMI Group Limited v. John Smith, Whois Protection Service LLC, WIPO Case No. D2007-1798; Neteller Plc. v. Dalene Lupinek, WIPO Case No. D2006-1301; Gianfranco Ferre' S.p.A. v. GFF Inc., WIPO Case No. D2004-0198.
The Complainant further argues that rather than diminishing or eliminating the potential for confusion, the addition of the generic term “group” in the disputed domain name is in fact is likely to increase the likelihood of confusion. In this regard the Complainant cites the UDRP panel decisions in Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Jean Shi aka Jaye Corporation, WIPO Case No. D2010-1466, Barilla G. e R. Fratelli S.p.A. v. EAC International Co., Limited, WIPO Case No. D2013-1902 and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s first use and first registration of its TOMMY BAHAMA mark predates the registration of the disputed domain name on November 15, 2014 by 21 years and the domain name was registered 18 years after the Complainant registered its first trademark in Australia.
The Complainant asserts that there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s mark.
The Respondent has not been commonly known as TOMMY BAHAMA or done business under that name. The Respondent’s use of the disputed domain name is not in connection with any bona fide attempt to offer goods and services to the public.
The Complainant has submitted evidence to show that the disputed domain name appears to merely function as the address of a parking page and submits that other panels have found that a respondent cannot acquire rights or legitimate interest for the purpose of the Policy by such use. In this regard the Complainant cites the decisions of UDRP panels in Chanel, Inc. v. Domain Privacy Group, Inc. / Charlene Newport, WIPO Case No. D2009-0081; Martha Stewart Living Omnimedia, Inc. v. Domain Deals, WIPO Case No. D2007-0289 and DreamWorks, L.L.C. v. Sequence Media, LLC, WIPO Case No. D2003-0219.
The Complainant submits that since the Respondent has no rights in the TOMMY BAHAMA mark the Respondent is not using the disputed domain name for any legitimate noncommercial or fair use purpose and submits that it is reasonable to assume that the disputed domain name is being used by the Respondent to profit from the Complainant’s reputation and goodwill. The Complainant submits that such use does not constitute a legitimate, bona fide offering of goods or services for the purposes of the Policy. In this regard the Complainant cites the decision of the panel in Ciccione v. Parisi, WIPO Case No. D2000-0847.
The Complainant submits that in the circumstances outlined, the Respondent bears the burden of establishing his rights or a legitimate interest in the disputed domain name.
Addressing the issue of bad faith, the Complainant submits that the Respondent registered the disputed domain name with the sole intention of causing confusion with the Complainant and its business and is using the disputed domain name in bad faith for commercial gain and to benefit from the goodwill and fame associated with Complainant’s TOMMY BAHAMA mark.
The Complainant asks this Panel to note that the disputed domain name purposefully incorporates the Complainant’s well known and pre-existing TOMMY BAHAMA mark.
Furthermore the disputed domain name resolves to a parking page which the Complainant alleges constitutes “passive holding” which has been found to constitute bad faith use in a number of cases including Companhia Brasileira de Bebidas – CBB v. Pedro Cuesta Unkhoff and IA LTDA, WIPO Case No. D2005-0634 and Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Lastly, the Complainant submits that the Respondent habitually engages in this type of bad faith behavior, namely, registering domain names that are confusingly similar to well-known trademarks as demonstrated in the eight previous cases listed above.
There was no Response or other submissions filed by the Respondent.
6. Discussion and Findings
Paragraph 4 of the Policy requires the Complainant to establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it is the owner of the TOMMY BAHAMA mark through the substantial international portfolio of trademark registrations for incorporating the TOMMY BAHAMA mark and its substantial international trade in goods bearing the mark as described above.
The disputed domain name <tommybahamagroup.com> fully incorporates the Complainant’s well known mark and this Panel agrees with the Complainant’s submissions that the additional element being the word “group” does not distinguish the disputed domain name in any way from the Complainant’s mark. The distinctive, dominant and recognizable elements of the disputed domain name are the words “Tommy” and “Bahama”.
In the circumstances this Panel finds that on the balance of probabilities the disputed domain name is confusingly similar to the Complainant’s TOMMY BAHAMA mark.
The Complainant has therefore satisfied the first element in the test set out in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection with the Complainant which is the owner of a well-known and distinctive trademark. The Respondent is using the domain name which is confusingly similar to and fully incorporates the Complaint’s mark, without authority or permission. The Respondent is clearly not using the disputed domain name for a noncommercial purpose.
This Panel accepts the Complainant’s submission that in such circumstances the burden of production shifts to the Respondent to establish that it has rights or legitimate interests in the disputed domain name. The Respondent has failed to discharge that burden.
In the circumstances this Panel is satisfied that the Complainant has also satisfied the second element of the test in paragraph 4 of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name fully incorporates the Complainant’s TOMMY BAHAMA mark. That mark is an unusual combination of two words, one being a personal name and the other a reference to the name of the Commonwealth of the Bahamas and or its archipelago. This combination is distinctive and it is improbable that the domain name incorporating those two elements in the same order was selected other than to refer to the Complainant’s mark.
This Panel finds that on the balance of probabilities the disputed domain name was selected and registered in order to refer to the Complainant’s mark and to take predatory advantage on the Internet of the goodwill and reputation established by the Complainant through its international business and the website that it has established to promote and market its goods. Despite having been given the opportunity to refute the Complainants submissions in this regard, the Respondent has not given any other explanation as to why the domain name was selected and registered.
The Respondent has arranged or permitted the disputed domain name to resolve to a parking page. Since the early decision in Telstra Corporation Limited v. Nuclear Marshmallows, supra, UDRP panels have continuously found that passive holding of a domain name (i.e., when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or to contact the trademark holder) may amount to bad faith use, depending on the surrounding circumstances.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 3.2 states inter alia with regard to the consensus view of panelists in respect of passive holding: “Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. UDRP panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.”
In the present case, the surrounding circumstances that indicate bad faith use by passive holding are that the Complainant has an international reputation in the TOMMY BAHAMA mark, the Respondent has not filed a Response, the disputed domain name was on the balance of probabilities selected and registered because it referred to the Complainant’s mark, it is probable that the disputed domain name is interfering and diverting Internet traffic which is intended for the Complainant, the Respondent has not discharged his burden of proof to establish that he has any rights or legitimate interest in the disputed domain name.
While every case should be taken on its own facts and merits, it is also significant in this present case that the Respondent has not denied that panelists have found on eight separate occasions in the cases listed above, that it has registered and used Internet domain names in bad faith.
In the circumstances this Panel is satisfied on the balance of probabilities that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant has therefore succeeded in establishing the third and final element of the test in paragraph 4 of the Policy and is entitled to succeed in this Complaint.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain name <tommybahamagroup.com> be transferred to the Complainant.
Date: March 21, 2015