The Complainant is Tommy Bahama Group, Inc. of Seattle, Washington, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is James Shepard of Vancouver, British Columbia, Canada.
The disputed domain name <tommybahamaspay.com> is registered with Domain.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2015. On July 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2015. The Respondent acknowledged receipt thereof by filing an email communication with the Center on July 30, 2015.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on July 31, 2015. 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.
Since at least 1993 the Complainant has used the trademark and service mark TOMMY BAHAMA in connection with its “upscale island-inspired apparel and related accessories”. The United States Patent and Trademark Office has issued to the Complainant more than 45 registrations for marks that consist in whole or in part of the TOMMY BAHAMA mark. One of the earliest registrations is dated November 2, 1993. The Complainant also owns numerous registrations for its TOMMY BAHAMA mark in various parts of the world including Canada, the Bahamas, Australia, the European Union, Japan, Mexico, Peru and the Philippines.
As a complement to the Complainant’s retail stores, the 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.
The disputed domain name <tommybahamaspay.com> was registered on April 20, 2015.
The Complainant operates more than 130 TOMMY BAHAMA retail stores for its apparel and accessories in locations throughout the United States; and through various arrangements has over 24 international TOMMY BAHAMA retail stores around the world, including Vancouver, Canada where the Respondent resides. The Complainant also has retail stores in Australia, Dubai, Hong Kong, China, Japan, Macau, China, and Singapore.
In the fiscal year 2014, the Complainant’s net sales of TOMMY BAHAMA goods and services were approximately USD 627 million. In fiscal years 2012 and 2013, the net sales of goods and services amounted to approximately USD 528 and USD 584 million respectively.
The Complainant says that it has spent tens of millions of dollars promoting and marketing its goods and services under the TOMMY BAHAMA mark, and that these goods and services have received an enormous amount of publicity in the United States and throughout the world, including in Canada. As a result, goods and services sold in connection with the TOMMY BAHAMA mark are recognized worldwide as being associated with Tommy Bahama, and “the TOMMY BAHAMA [m]ark and its associated goodwill are assets of substantial value to Tommy Bahama.” As a result of the Complainant’s continuous and exclusive use of the TOMMY BAHAMA mark in commerce, “Tommy Bahama owns valid and enforceable trademark and service mark rights in the TOMMY BAHAMA [m]ark”.
The Complainant’s case is that the Respondent has registered and used the disputed domain name in connection with a portal page, offering links to third party sites.
The Complainant seeks the transfer of the disputed domain name to itself.
As stated earlier, on July 30, 2015, the Respondent acknowledged receipt of the Center’s notification of default. However, the Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any Rules and principles of law that it deems appropriate. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
The Complainant says that the disputed domain name wholly incorporates the Complainant’s trademark in its entirety, and that in such a case “confusing similarity must be assumed”.
The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the registered trademark. In The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137, the panel stated that: “the domain name incorporates the RITZ mark in its entirety. Numerous WIPO panels have found that a domain name that wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy.”
The Complainant adds that “In fact, the only difference between the TOMMY BAHAMA [m]ark and the [disputed domain name] is the addition of the letters ‘spay’”.
The Panel does not consider that the addition of those letters dispels the likelihood of confusion:
(i) In ESH Strategies Branding, LLC v. Kumpol Sawaengkarn, WIPO Case No. D2011-0843, the complainant submitted that the respondent was taking advantage of a common typing error and in particular that adding or deleting the plural “s” from a domain name is a common mistake Internet users make: “Complainant therefore contends that this constitutes typo squatting. The Panel accepts that this is a clear case of typo squatting, which is indicative of Respondent’s wish to profit from the goodwill developed in Complainant’s Trademark.”
(ii) In Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093, the panel stated that “The distinctive feature of the disputed domain name <kindlepay.com> is ‘kindle’, being the Complainant's KINDLE trademark in its entirety. The mere additional of the non-distinctive word ‘pay’ is insufficient to distinguish it from the Complainant’s KINDLE trademark.”
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
The Complainant says that the Respondent is not affiliated with the Complainant and has not been authorized to use the TOMMY BAHAMA mark or sell TOMMY BAHAMA goods. Further, the Complainant says that its rights in the TOMMY BAHAMA mark long predate the Respondent’s acquisition of the disputed domain name, and that the burden is on Respondent to establish rights or a legitimate interest in the disputed domain name.
Paragraph 4(c) of the Policy sets out circumstances which, without limitation, may demonstrate a right or legitimate interest in a domain name. The Respondent was entitled to deal with the Complainant’s allegations, and was entitled to demonstrate any right or legitimate interest in the disputed domain name, by way of the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so, and the Panel does not consider on the basis of the available evidence that any such circumstances exist in this case. Whilst it is for the Complainant to prove the three elements of paragraph 4(a) of the Policy, it is clearly established that, in relation to the second element of the Policy, once the Complainant has made out a prima facie case, it is then a matter for the Respondent to answer that case: whether or not a respondent has rights or legitimate interests is a question which a respondent can answer better than a complainant.
For the foregoing reasons, the Panel is satisfied that the Complainant has shown its compliance with the requirements of paragraph 4(a)(ii) of the Policy.
As stated above, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. This includes the circumstance at paragraph 4(b)(iv) of the Policy:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Complainant says that Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the goodwill and fame associated with Complainant’s TOMMY BAHAMA mark: “[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 [m]ark, and was registered long after this mark became well-known to consumers.”
The Complainant’s case is that the disputed domain name is a portal website containing “related links” to other TOMMY BAHAMA search links, featuring content related to the Complainant’s goods and services, including links related to “Tommy Bahamas Swimwear”, “Tommy Bahamas Beach Chair”, and “Tommy Bahama Shirts for Sale”. These related links “resolve to another webpage that provides links to various third party retailers offering TOMMY BAHAMA brand products …The structure of Respondent’s website indicates that it is a portal or click-through site, from which Registrant receives revenues from third parties whose websites are accessed via the <tommybahamaspay.com> website”.
In Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728, the panel stated that the disputed domain names “trigger a pop-up ad, and all four domain names have been used by Respondent to forward to a kind of web portal with links to different products some of them, are competing with those of Complainant’s. This shows that Respondent knows that Internet users recognize Complainant’s BANG & OLUFSEN mark as identifying Complainant’s business. The Panel finds that this use of the domain names for commercial gain, namely to sell different products or advertisements, reflects Respondent’s attempt to attract users to its website by improperly associating itself with Complainant’s mark or misleadingly suggesting an affiliation with, or sponsorship by, Complainant.”
It is again relevant to note that the Respondent was entitled to answer the Complainant’s case by serving a Response, but has chosen not to do so.
The Panel is therefore satisfied that the Complainant has provided evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy, and has therefore proved the requirements of 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, <tommybahamaspay.com> be transferred to the Complainant.
Anthony R. Connerty
Sole Panelist
Date: August 12, 2015