WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tommy Bahama Group, Inc. v. David K Austreng, IT Labs, Inc.
Case No. D2021-4393
1. The Parties
Complainant is Tommy Bahama Group, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is David K Austreng, IT Labs, Inc., United States.
2. The Domain Name and Registrar
The disputed domain name <metatommybahama.com> (the “Disputed Domain Name”) 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 December 28, 2021. On December 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 30, 2021, 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 Complainant on December 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 3, 2022.
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 Respondent of the Complaint, and the proceedings commenced on January 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2022.
The Center appointed Colin T. O'Brien as the sole panelist in this matter on January 31, 2022. 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
Complainant owns valid trademark and service mark rights in TOMMY BAHAMA (the “TOMMY BAHAMA Mark”) in numerous jurisdictions. For example, the United States Patent and Trademark Office (“USPTO”) has issued Complainant several registrations for marks that consist, in whole or in part, of TOMMY BAHAMA including:
TOMMY BAHAMA, Reg. No. 1,802,812, registered on November 2, 1993, for “men’s, women’s, boys’, and girls’ clothing; namely, knit and woven shirts; knit and woven pants, shorts, and jeans; sweaters, jackets, vests, coats, rainwear, belts, hats, gloves, socks, scarves, ties, and neckerchiefs” in Class 25;
TOMMY BAHAMA, Reg. No. 2,492,771, registered on September 25, 2001, for “retail store services featuring clothing and general consumer goods” in Class 35; and
TOMMY BAHAMA, Reg. No. 2,284,151, registered on October 5, 1999, for “restaurant, bar and carry-out food services” in Class 42.
The Disputed Domain Name was registered on November 20, 2021, and resolves to a parked website with pay-per-click links.
5. Parties’ Contentions
Since at least as early as 1993, Complainant has continuously and exclusively used the TOMMY BAHAMA Mark in connection with its upscale island-inspired apparel and related accessories. Over the years, Complainant has expanded its TOMMY BAHAMA line of products to include a “lifestyle” line of island-inspired accessories, including, but not limited to, footwear, swimwear, sunglasses, eyewear, watches, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings.
Complainant presently operates 160 TOMMY BAHAMA retail stores for its apparel, accessories, and home furnishings in locations throughout the United States. In addition, through various arrangements, it has 24 international TOMMY BAHAMA stores in Australia, Canada, Dubai, and Japan. Complainant also employs a network of independent sales representatives who are authorized to sell TOMMY BAHAMA apparel, accessories, and home furnishings to various other retail outlets and corporate accounts, including resorts and spas, hotels, golf pro shops, and upscale department store chains, such as Macy’s, Nordstrom, Belk, and Von Maur. Additionally, Complainant operates 20 TOMMY BAHAMA restaurant-retail locations in the United States.
Complainant has had sales of hundreds of millions of United States dollars per year since 2013.
Complainant operates a heavily trafficked, interactive website at 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.
Complainant has spent tens of millions of United States dollars promoting and marketing its goods and services under the TOMMY BAHAMA Mark, and these goods and services have received an enormous amount of publicity in the United States and throughout the world. As a result of Complainant’s promotion and advertising, goods and services sold in connection with the TOMMY BAHAMA Mark are recognized worldwide as being associated with Complainant, and the TOMMY BAHAMA Mark and its associated goodwill are assets of substantial value to Complainant.
The Disputed Domain Name is identical or confusingly similar to Complainant’s well-known TOMMY BAHAMA Mark because it incorporates the TOMMY BAHAMA Mark in its entirety. The addition of the descriptive term “meta” is insufficient to meaningfully distinguish the Disputed Domain Name, given the inclusion of the well-known TOMMY BAHAMA Mark as the dominant portion of the Disputed Domain Name. The term “meta” is likely to be read by consumers as a reference to the “metaverse” and thus consumers will view the Disputed Domain Name as being descriptive of TOMMY BAHAMA goods being offered through a virtual space. It is well-established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of comparison in the context of UDRP decisions.
Given the renown of Complainant’s TOMMY BAHAMA Marks, including Complainant’s well-known “www.tommybahama.com” website, the relevant consumers, on seeing the Disputed Domain Name, will reasonably believe that it is related to Complainant.
Complainant’s first use and first registration of its TOMMY BAHAMA Mark long predates any use Respondent may have made of the Disputed Domain Name. The evidence here establishes a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other rights by which Respondent could own or use any domain name incorporating the TOMMY BAHAMA Mark or a mark confusingly similar thereto. Respondent cannot establish that it is commonly known by the Disputed Domain Name, as there is no indication that Respondent has conducted any legitimate business under the name “Meta Tommy Bahama”. Indeed, there is nothing in Respondent’s WhoIs information to suggest Respondent is commonly known by the Disputed Domain Name.
Respondent’s use of the Disputed Domain Name is not in connection with a bona fide attempt to offer goods and services to the public. The Disputed Domain Name is currently parked. The website at the Disputed Domain Name displays advertisements for searches related to Complainant’s TOMMY BAHAMA Mark, which, once clicked on, display advertisements for entities selling goods competitive to those offered by Complainant. In view of the extensive use and widespread recognition of Complainant’s Mark, and based on the above, Complainant reasonably believes that Respondent is not using the Disputed Domain Name for any legitimate noncommercial or fair use purpose but for profit, which does not constitute a legitimate, bona fide offering of goods or services.
Respondent’s bad-faith registration and use of the Disputed Domain Name is established by the fact that it is nearly identical and/or confusingly similar to 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.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has demonstrated it owns registered trademark rights in the TOMMY BAHAMA Mark. The TOMMY BAHAMA Mark is wholly incorporated in the Disputed Domain Name, and clearly recognizable therein. The addition of the term “meta” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in that it has not been commonly known by the Disputed Domain Name, is not making a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The fact that Respondent obtained the Disputed Domain Name almost 30 years after Complainant had begun using its well-known TOMMY BAHAMA Mark indicates that Respondent sought to piggy-back on the fame of Complainant’s mark.
After a complainant has made a prima facie case, the burden of production shifts to respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Name; rather, the evidence suggests that it was registered to make an undue profit based on Complainant’s rights (see, e.g., Bottega Veneta SA v. ZhaoJiafei, WIPO Case No. D2013-1556).
In the absence of any evidence rebutting Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Disputed Domain Name was registered many years after Complainant first registered and used its TOMMY BAHAMA Mark. The evidence on the record provided by Complainant with respect to the extent of use of its TOMMY BAHAMA Mark, combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, Respondent undoubtedly knew of Complainant’s TOMMY BAHAMA Mark, and knew that it had no rights or legitimate interests in the Disputed Domain Name.
There is prima facie no reason for Respondent to have registered the Disputed Domain Name containing the entirety of the TOMMY BAHAMA Mark with the term “meta”. Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainant has submitted evidence that the Disputed Domain Name resolves to a parking page that contains pay-per-click links to Complainant’s competitors. This parking page appears to have been created by the registrar of the Disputed Domain Name. However, the fact that these links may have been generated by the registrar or an auction platform does not prevent a finding of bad faith. Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, is instructive. In that case, the panel wrote: “[…] Respondent states that he has not received any money or discount from the website. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.” Here, the Panel finds that the Respondent has used the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s TOMMY BAHAMA Mark.
Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith, and finds that Complainant has satisfied 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, <metatommybahama.com>, be transferred to Complainant.
Colin T. O'Brien
Date: February 15, 2022