WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tommy Bahama, Inc. v. Anonymize, Inc.
Case No. DCO2021-0079
1. The Parties
The Complainant is Tommy Bahama, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Anonymize, Inc., United States.
2. The Domain Name and Registrar
The disputed domain name <tommybahama.co> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 the Complainant on September 30, 2021, 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 October 1, 2021.
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 October 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.
The Center appointed William F. Hamilton as the sole panelist in this matter on November 16, 2021. 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
Since 1993, the Complainant has continuously and exclusively marked upscale apparel and related accesses including footwear, swimwear, sunglasses, eyewear, watches, bedding, sporting goods, fragrances, personal care products and home furnishings under the trademark TOMMY BAHAMA (the “Mark”). The Complainant operates 133 United States retail stores and 22 international stores. The Complainant operates an interactive website at the domain <tommybahama.com>. The Complainant registered the Mark with the United States Patent and Trademark Office on November 2, 1993 obtaining Reg. No. 1,802,812. Since then, the Complainant has obtained dozens of registrations for the Mark in other national jurisdictions. Tommy Bahama Group, Inc. v. RaeAnna Reynolds, WIPO Case No. D2020-2838.
The Respondent registered the disputed domain name on August 14, 2020. At the time the Complaint was filed the disputed domain name resolved to a website displaying pay-per-click (“PPC”) links. According to the Complainant, as of September 22, 2021 the disputed domain name redirected to a website that appeared to be part of a malware scheme, directing users to update their browsers. 1
5. Parties’ Contentions
The Complainant asserts the disputed domain name is identical to the Mark because the disputed domain name is composed entirely of the Complainant’s Mark. The Complainant further asserts the Respondent has no rights or legitimate interests in the Mark or the disputed domain name as there is no evidence of any legitimate business activity of the Respondent prior to registration and use of the disputed domain name. Further, the Complainant asserts that the Complainant has not authorized the use of the Mark by the Respondent. The Complainant also asserts the disputed domain name was registered and used in bad faith to divert unsuspecting Internet users to the Respondent’s website offering PPC links to websites offering competitive apparel. Moreover, the Complainant argues that using the disputed domain name to invite Internet users to install malware onto their computers is also evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.2
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed entirely of the Complainant’s Mark. A domain name which wholly incorporates a complainant’s mark or prominent and distinctive portions thereof, is sufficient to establish confusingly similarity for the purposes of the Policy irrespective of any added terms. Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable with the disputed domain name, the additions of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). In this case, the disputed domain name in its entirety is composed of the Mark.
The Top-Level Domain (“TLD”) of the disputed domain name, in this case “.co”, may be disregarded for the purposes of assessment under the first element, as the TLD is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759; Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762.3
B. Rights or Legitimate Interests
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Complainant has established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. PepsiCo, Inc v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
The disputed domain name consists of the Complainant’s trademark in its entirety. Accordingly, the nature of the disputed domain name is such to carry a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Moreover, the website to which the disputed domain name resolved consisted of PPC links that compete with the Complainant’s goods and services, which cannot constitute a bona fide offering. See section 2.9 of the WIPO Overview 3.0. Madonna Ciccoone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. Furthermore, according to the evidence provided by the Complainant, the use of the disputed domain name changed into facilitating a fraudulent malware scheme directing users to update their browsers. Using a domain name to induce users to download malware is also not bona fide use. Additionally, the disputed domain name is offered for sale which is further evidence of a lack of rights or legitimate interests in the disputed domain name. Panavision International, L.P., Panavision Inc. v Reserved for Customers, MustNeed.com, WIPO Case No. D2012-0161.
The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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; or
(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; or
(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 its website 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 website or location or of a product or service on the respondent’s website or location.
The Panel finds the disputed domain name was registered and is being used in bad faith.
A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark. Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763. The Mark is well known and distinctive, especially in the upscale clothing industry. The disputed domain name incorporates the Mark entirely with the obvious intent by the Respondent of suggesting to any Internet user that the disputed domain name resolves to a website offering products sponsored by the Complainant. Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s well-known Mark when registering and using the disputed domain name. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (“Blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith.”)
The disputed domain name has been used to host a website featuring PPC links that compete with the Complainant’s products (i.e., “Womens Clothing”, “Mens Clothing”, and “Clothing Subscription Boxes”) and through which the Respondent presumably receives click-through revenue. Considering the construction of the disputed domain name and the fraudulent malware scheme, as noted above, it is clear to the Panel that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name as described under paragraph 4(b)(iv) of the Policy.
The Complainant has met its burden under 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 <tommybahama.co> be transferred to the Complainant.
William F. Hamilton
Date: November 24, 2021
1 The disputed domain name as of the issuance of this decision does not resolve to an active website. The disputed domain name is currently advertised as available for sale at a price substantially greater than the Respondent’s out of pocket costs.
2 The Registrar emailed the Center on October 11, 2021, stating that “[t]he Registrant does not plan to defend and is willing to give the domain to the Complainant.” On October 18, 2021, the Center advised the parties that a UDRP proceeding may be suspended to implement a settlement agreement. The Complainant then requested the Respondent to complete a settlement form. The Registrar responded that the Registrar had “…followed up with the Registrant regarding the settlement form. When I have it, I will send it on this ticket.” The Center received no further communications from the parties or the Registrar regarding any potential settlement.
3 The TLD of the disputed domain name “.co” is the country code TLD for Colombia.. This circumstance need not be addressed by the Panel in reaching the conclusions of this decision; however, the Panel notes that the Respondent’s choice of the “.co” TLD for the disputed domain name appears to be a ploy to allow registration of a disputed domain name that incorporates the Mark alone and which taken as a whole including the TLD is confusingly similar to the Complainant’s domain name.