WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tommy Bahama Group, Inc. v. Danny L
Case No. D2019-2397
1. The Parties
The Complainant is Tommy Bahama Group, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Danny L, United States.
2. The Domain Name and Registrar
The disputed domain name <tommybaihama.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 October 2, 2019. On October 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2019.
The Center appointed Martin Schwimmer as the sole panelist in this matter on November 13, 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, Tommy Bahama Group, Inc., is a retailer and manufacturer of apparel and accessories, owning and making use of the TOMMY BAHAMA trademark (the “Mark”) since 1993 (e.g., United States Registration No. 1802812, registered on November 2, 1993). It operates approximately 190 stores and 17 restaurants throughout the world. The Respondent registered the disputed domain name <tommybaihama.com> on August 16, 2019, which resolves to a parking page displaying links, several of which identify competitors of the Complainant.
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. Its accessories, include footwear, swimwear, sunglasses, eyewear, watches, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings. It operates more than 154 Tommy Bahama retail stores throughout the United States, and through various arrangements has 34 international Tommy Bahama stores in Australia, Canada, United Arab Emirates, Japan, Hong Kong, China, and China. The Complainant states that in its fiscal year 2018, its net sales of TOMMY BAHAMA marked goods and services were approximately USD 675 million. 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.
The Complainant asserts that it owns 38 United States trademark registrations for marks that consist in whole or in part of the TOMMY BAHAMA mark, such as United States Registration No. 1802812, for TOMMY BAHAMA, registered on November 2, 1993. It also owns registrations in approximately 60 other jurisdictions.
According to the Complainant, the Respondent’s registration of the disputed domain name presents a classic case of typosquatting. The disputed domain name is nearly identical and/or confusingly similar to the TOMMY BAHAMA trademark, as well as to the domain name for the website registered and operated by the Complainant.
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.
There is 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 Mark. The Respondent has not been commonly known by the disputed domain name or done business under that name.
The Respondent’s use of the disputed domain name is not in connection with a bona fide attempt to offer goods or services to the public. At the time of filing the Complaint, the disputed domain name resolved to page thatstated, “This page is parked for FREE, courtesy of GoDaddy.com”.
The Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the good will and fame associated with the Complainant’s TOMMY BAHAMA Mark. Here, 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 Mark, and was registered long after this mark became well known to consumers. Such registration and use of the disputed domain name is, in and of itself, a form of opportunistic bad faith.
In addition, the Respondent appears to be using the term “tommybahaminc” (sic) as a prefix to his email address (tommybahaminc@[...]), which likewise indicates an intention by the Respondent to associate himself or herself with the Complainant and to benefit from the goodwill and fame associated with the Complainant’s TOMMY BAHAMA Mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant easily establishes ownership of the TOMMY BAHAMA trademark through its ownership of multiple registrations in multiple jurisdictions. Its use of the Mark is demonstrated at the domain name <tommybahama.com>.
The insertion of the letter “i” in the Respondent’s disputed domain name does not create a visually or phonetically different string from that in “tommybahama”. There is no word or name “baihama” in English. The Panel notes that entering the terms “tommy baihama” and “baihama” into the Google search engine produces prompts asking if the user intended to search “tommy bahama” and “bahama” respectively.
Accordingly, the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has received no authorization of any sort from the Complainant to use the TOMMY BAHAMA trademark or include it in any domain name. The Respondent is not known by the name Tommy Bahama or disputed domain name, nor does it carry on any legitimate business under or by reference to those names. There is no bona fide use of the disputed domain name as the disputed domain name, which is virtually indistinguishable from the Complainant’s trademark, resolves to a parking page, which contains links, some of which links are labeled with the names of the Complainant’s competitors.
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, according to paragraph 4(a)(ii) of the Policy.
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 multiple jurisdictions. It is inconceivable that the Respondent was unaware of the Complainant’s distinctive and well-known 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.
If there were any doubt as to the Respondent’s awareness of the Complainant’s prior rights in the name, the Panel notes that the Respondent uses an email address, tommybahaminc@[...], which spells the first syllable of the second word of the Mark as the Complainant does and not as the Respondent does in the disputed domain name, specifically, “ba” and not “bai”. Furthermore, the Respondent’s parking page displays keyword ads identifying competitors of the Complainant.
The registration and use of the disputed domain name clearly intended to typosquat on a well-known trademark reflects bad faith on the part of the Respondent. See, e.g., Tommy Bahama Group, Inc. v. Registration Private Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0198. The Panel holds that the disputed domain name was registered and is being used in bad faith, according to paragraph 4(a)(iii) 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 name <tommybaihama.com> be transferred to the Complainant.
Date: November 27, 2019