WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tommy Bahama Group, Inc. v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2019-0198
1. The Parties
The Complainant is Tommy Bahama Group, Inc. of Seattle, Washington, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Registration Private / Domains by Proxy, LLC of Scottsdale, Arizona, United States, Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <tommmybahama.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 January 25, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 13, 2019.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on February 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2019.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on March 20, 2019. 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 owns thirty-eight registrations in the United States for trademarks that consist, in whole or in part, of TOMMY BAHAMA, and also owns registrations for the TOMMY BAHAMA trademark in numerous other jurisdictions. Registration certificates are attached to the Complaint.
The Complainant operates an interactive website at “www.tommybahama.com”. This website features information about the Complainant’s apparel and accessories, retail stores and restaurant locations, and also customer service and product care information.
The Respondent has made no active use of the disputed domain name.
The disputed domain name was registered on December 3, 2018.
5. Parties’ Contentions
The Complainant asserts that since at least 1993 it has continuously and exclusively used the TOMMY BAHAMA trademark in connection with its apparel and related accessories. It has a product range of accessories, including footwear, swimwear, sunglasses, eyewear, watches, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings. It operates more than 151 Tommy Bahama retail stores throughout the United States, and through various arrangements has 21 international stores in Australia, Canada, Dubai, Japan, Hong Kong, China, and China. The Complainant states that in the fiscal years 2015 and 2014, its net sales of TOMMY BAHAMA marked goods and services approximated USD 658 million, and USD 627 million, respectively. The Complainant asserts that it has spent tens of millions of dollars promoting and marketing its goods and services under the TOMMY BAHAMA trademark, and that its goods and services have received substantial publicity in the United States and throughout the world.
According to the Complainant, the Respondent’s registration of the disputed domain name presents as a classic case of typosquatting. The disputed domain name is nearly identical and/or confusingly similar to the TOMMY BAHAMA trademark, as well as the domain name for the Tommy Bahama website registered and operated by the Complainant.
The Complainant stresses that the disputed domain name contains exactly the mark and name TOMMY BAHAMA, but for the addition of the letter “m” in the term “Tommy” so that it reads “Tommmy” such as would result from users who mistype the domain name <tommybahama.com> and accidentally add a letter “m” in the address. Such a minor spelling alteration is an insignificant variation in the domain name context, the Complainant asserts, which does nothing to obviate the confusing similarity between the disputed domain and the TOMMY BAHAMA registered trademark. Because the disputed domain name is based on a slight and immaterial mistyping of the Complainant’s TOMMY BAHAMA trademark, confusing similarity should be presumed, according to the Complainant.
The disputed domain name was registered on November 9, 2018, 25 years after the Complainant first used the TOMMY BAHAMA trademark in interstate commerce in the United States and registered its first federal trademark there. The Respondent thus at the very least had constructive knowledge of the Complainant’s prior use and trademark rights. The Complainant asserts that the burden is on the Respondent to demonstrate or establish rights or legitimate interests in the disputed domain name, which it cannot do. There is also no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the TOMMY BAHAMA trademark.
The Complainant asserts that the Respondent has not been commonly known as “Tommy Bahama” nor has it done business under that name. Nor is the Respondent’s use of the disputed domain name in connection with a bona fide attempt to offer goods and services to the public. Rather, the disputed domain name serves as a trap for unwary Internet users who mistype the domain name <tommybahama.com> by accidentally adding a letter “m” at the end of the address. This is classic typosquatting, intended to direct Internet users who misspell the Complainant’s trademark to the Respondent’s website. The disputed domain name in fact resolves to a page that states, “This page isn’t working. tommmybahama.com didn’t send any data”.
ERR_EMPTY_RESPONSE.” This is not a case of legitimate commercial speech as no communication is made through the relevant website. The Complainant points out that UDRP panels have commonly held that non-use of a domain name does not prevent a finding of bad faith under the ‘doctrine of passive holding’.
The Respondent’s bad faith registration and use of the disputed domain name is established by the fact that the disputed domain name purposefully incorporates the well-known TOMMY BAHAMA trademark, and was registered long after this mark became known to consumers. This, so the Complainant asserts, is a typical example of opportunistic bad faith.
In addition, the Respondent has a history of registering domain names that have value to the rights holder of a particular brand, according to the Complainant. The Respondent has been identified as the respondent in 19 UDRP actions. Ten of these were asserted within the past year, and every one has resulted in the transfer of the domain name(s) at issue from the respondent to the complainant.
Finally, the Complainant asserts that given the asserted fame of Complainant’s TOMMY BAHAMA trademark and the other circumstances set out in the Complaint, there can be no doubt that Respondent’s actions are willful and in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the distinctive TOMMY BAHAMA registered trademark of the Complainant. However, it varies only in a very minor and barely noticeable manner from that mark, by the simple addition of an “m” in the term “tommy”, so that it reads “tommmy”.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the TOMMY BAHAMA trademark of the Complainant.
B. Rights or Legitimate Interests
The Respondent has received no authorization of any sort from the Complainant to use the distinctive TOMMY BAHAMA trademark, or to include it in any domain name. The Respondent is not known by the name Tommy Bahama nor does it carry on any legitimate business under or by reference to that name. The disputed domain name, which is virtually indistinguishable from the Complainant’s trademark, resolves to an inactive Internet location and not to any website offering any goods or services, legitimate or otherwise. The Respondent has not filed any Response asserting any rights or legitimate interests.
Therefore, the Panel holds that the Complainant has established an unrebutted, prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered at a time when the reputation of the Complainant and its TOMMY BAHAMA trademark was well established in the relevant marketplace in multiple jurisdictions. The registration is by way of a deliberate typosquatting ploy and it is inconceivable that it came about without the Respondent being aware of the Complainant’s distinctive trademark. The registration of the disputed domain name is a clear example of typosquatting, where the Respondent hopes in some way to make a profit or disrupt the business of the Complainant from the inadvertent typing errors of Internet users who type the TOMMY BAHAMA trademark into their web browsers. That the disputed domain name does not resolve to an inactive website is no bar to a finding of bad faith, as has been held on many occasions by other UDRP panels. The Respondent also used a privacy shield service.
Therefore the Panel holds in the circumstances of this case that the disputed domain name was registered and used 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, <tommmybahama.com> be transferred to the Complainant.
William A. Van Caenegem
Date: April 3, 2019