WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tommy Bahama Group, Inc. v. Paige Sanders, Fabrics Online LLC
Case No. D2016-1858
1. The Parties
Complainant is Tommy Bahama Group, Inc. of Seattle, Washington, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is Paige Sanders, Fabrics Online LLC of High Point, North Carolina, United States of America.
2. The Domain Names and Registrar
The disputed domain names <alltommybahamafabric.com>; <alltommybahamafabric.net>; <alltommybahamafabrics.com>; <alltommybahamafabrics.net>; <buytommybahamafabric.com>; <buytommybahamafabric.net>; <buytommybahamafabrics.com>; <buytommybahamafabrics.net>; <desginertommybahamafabric.com>; <desginertommybahamafabric.net>; <designertommybahamafabrics.com>; <designertommybahamafabrics.net>; <discounttommybahama.com>; <discounttommybahama.net>; <justtommybahamafabric.com>; <justtommybahamafabric.net>; <onlytommybahamafabric.com>; <onlytommybahamafabric.net>; <onlytommybahamafabrics.com>; <onlytommybahamafabrics.net>; <tommybahamafabricoutlet.com>; <tommybahamafabricoutlet.net>; <tommybahamafabricsoutlet.com>; <tommybahamafabricsoutlet.net>; <tommybahamafabricstore.com>; <tommybahamafabricstore.net>; <tommybahamahomefabric.com>; <tommybahamahomefabric.net>; <tommybahamahomefabrics.com>; <tommybahamahomefabrics.net>; <valuetommybahamafabric.com>; <valuetommybahamafabric.net>; <valuetommybahamafabrics.com>; <valuetommybahamafabrics.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2016. On September 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 16 and 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 13, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 20, 2016. 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.
By email dated October 18, 2016, Respondent informed the Center that it had “no problem with transferring” the disputed domain names to Complainant, if the necessary information regarding transfer could be resent to it. Respondent suggested it was under the mistaken belief that the disputed domain names had already been transferred.
4. Factual Background
Complainant is the owner of a substantial number of registrations for the word trademark TOMMY BAHAMA, and various TOMMY BAHAMA-formative word, and word and design, trademarks on the Principal Register of the United States Patent and Trademark Office (USPTO), including for the word TOMMY BAHAMA, registration number 1,802,812, registration dated November 2, 1993, in international class (IC) 25, covering men’s, women’s, boy’s, and girl’s clothing, as further specified,1 and; for the word and design TOMMY BAHAMA (word with script lettering and centered palm tree drawing), registration number 3,198,912, registration dated January 16, 2007, in IC 25. Complainant maintains a substantial number of additional TOMMY BAHAMA trademark registrations in the United States and other countries.
Complainant operates more than 136 Tommy Bahama retail stores in locations throughout the United States, and through various arrangements in other countries. Complainant sells its products through a variety of other retail outlets such as within third-party department stores. Complainant’s products include clothing and home furnishings, and its home furnishings line includes “an entire collection of fabrics designed to capture island living at its best - over 175 different fabric designs in all”. Complainant operates a commercial website mainly devoted to apparel and accessories at <tommybahama.com>. Complainant operates a commercial website mainly devoted to fabrics at <tommybahamafabrics.com>.
According to the Registrar’s information, Respondent is registrant of each of the disputed domain names. According to that information, the record of registration for each of the disputed domain names was created on April 5, 2016.
Respondent has parked the disputed domain names using GoDaddy.com parking pages with Sponsored Listings. Substantially all of the Sponsored Listings are links referring to third-party offerings of fabric products. In addition, the parking pages offer the disputed domain names for sale through GoDaddy Auctions at set prices ranging between USD 300 and USD 1,000.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it owns rights in the word trademark TOMMY BAHAMA and various TOMMY BAHAMA word, and word and design (including formative) trademarks, as evidenced by registration at the USPTO and by use in commerce in the United States and elsewhere.
Complainant alleges that the disputed domain names are confusingly similar to its TOMMY BAHAMA trademark because the disputed domain names directly incorporate the trademark, adding generic terms that fail to distinguish the disputed domain names from its trademark and that may serve to increase likelihood of confusion.
Complainant argues that Respondent has failed to establish rights or legitimate interests in the disputed domain names because: (1) Respondent had actual or constructive knowledge of Complainant’s well-known trademark when it registered the disputed domain names; (2) Respondent has not been authorized by Complainant in any way to use its trademark; (3) Respondent has not been commonly known as TOMMY BAHAMA or done business under that name; (4) Respondent has not used the disputed domain names in connection with a bona fide offer of goods or services (which is not established by use in connection with “portal or click-through websites from which Respondent received revenues from third parties”), and; (5) Respondent’s use of the disputed domain names is not legitimate commercial speech.
Complainant contends that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent purposefully incorporated the trademark of Complainant in the disputed domain names long after Complainant’s trademark had become well-known, and; (2) Respondent has used the disputed domain names for commercial gain by establishing links to third-party websites offering fabric for sale.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions except in so far as Respondent indicated in correspondence to the Center that it was prepared to transfer the disputed domain names to Complainant.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its records of registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the trademark TOMMY BAHAMA including by registration at the USPTO and by use in commerce in the United States. Respondent has not challenged Complainant’s trademark rights. The Panel determines that Complainant has rights in the trademark TOMMY BAHAMA.
Each of the disputed domain names directly incorporates Complainant’s trademark, and adds generic or common term(s) before and/or after the trademark, in two cases with minor typographical errors in a common descriptive term (“desginer” instead of “designer”). Each of the generic or common terms are consistent with usages that might be made by the trademark-owner seller of fabric products in connection with the offering and sale of its products. The disputed domain names are confusingly similar to Complainant’s trademark in respect of visual appearance, sound and meaning. None of the generic or common terms serves to distinguish the disputed domain names from Complainant’s distinctive trademark from the standpoint of the Policy.
The Panel determines that Complainant has rights in the trademark TOMMY BAHAMA and that each of the disputed domain names is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. (Policy, paragraph 4(c)).”
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain names in connection with a GoDaddy.com parking page incorporating sponsored listings and offering the disputed domain names for sale does not establish rights or legitimate interests in favor of Respondent in the disputed domain names. Respondent’s use of the disputed domain names does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark 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; (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
In the instant case, Respondent registered thirty-four (34) disputed domain names that directly incorporate Complainant’s distinctive trademark while having actual or constructive knowledge of Complainant’s trademark rights. Through parking pages, Respondent has offered those disputed domain names to the public at prices in excess of its out-of-pocket expenses in connection with the disputed domain names. Respondent has engaged in a practice of preventing the owner of the trademark from reflecting its mark in corresponding domain names. Respondent has intentionally attempted to attract Internet users to its parking page websites for commercial gain (e.g., offering the disputed domain names for sale) by creating a likelihood of confusion with Complainant’s trademark as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s websites.
The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy.
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 names:
<valuetommybahamafabrics.net>, be transferred to Complainant.
Frederick M. Abbott
Date: November 1, 2016
1 Complainant notes that certain of its early trademark registrations are in the name of Viewpoint International, Inc. Complainant changed its corporate name in April 2005 from Viewpoint International to Tommy Bahama Group, Inc.