The Complainant is Tommy Bahama Group, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <tommybahamam.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2020, 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 26, 2020 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 September 29, 2020.
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 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2020.
The Center appointed Anna Carabelli as the sole panelist in this matter on November 5, 2020. 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.
The Complainant, a Delaware corporation with a principal place of business in Seattle, manufactures a wide range of island-inspired clothing and accessories under the TOMMY BAHAMA brand, and sells them worldwide in its TOMMY BAHAMA retail stores located in the United States and in other countries and through a network of independent sales representatives. In addition, the Complainant operates 16 TOMMY BAHAMA restaurant-retail locations in the United States.
The Complainant also operates an interactive website at the domain name <tommybahama.com>.
The Complainant owns registrations for trademarks consisting, in whole or in part, of TOMMY BAHAMA, in the United States and in numerous other jurisdiction including Panama. Schedules of TOMMY BAHAMA’s US and international trademark registrations are attached to the Complaint as Exhibits D and E.
The disputed domain name was registered by the Respondent on August 21, 2020, using a proxy service. The website at the disputed domain name displays links to advertisements for TOMMY BAHAMA and other related products (Exhibit H to the Complaint).
The Complainant asserts and contends that:
- It owns valid and enforceable trademark and service mark rights in the TOMMY BAHAMA trademark.
- Since at least 1993, it has continuously and exclusively used the TOMMY BAHAMA trademark in connection with its apparel and related accessories.
- The TOMMY BAHAMA trademark has been heavily advertised by the Complainant in connection with various media. The Complainant has spent tens of millions of dollars promoting and marketing its goods and services under the TOMMY BAHAMA trademark, and these goods and services have received substantial publicity in the United States and throughout the world.
- In the fiscal years 2019 and 2018, the Complainant’s net sales of TOMMY BAHAMA goods and services approximated USD 686 million and USD 658 million, respectively.
- The disputed domain name was registered on August 21, 2020, over 25 years after the Complainant first used the TOMMY BAHAMA trademark.
- The disputed domain name is confusingly similar with the Complainant’s trademark from which it varies by the simple addition of the letter “M” at the end of “BAHAMA”.
- The Respondent cannot demonstrate or establish rights or a legitimate interests in the disputed domain name because (i) 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 trademark; (ii) the Respondent has not been commonly known as “Tommy Bahama” nor has it done business under that name; (iii) the 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 resolves to a website displaying “Related Links” referencing “Tommy Bahama Clothing”, “Tommy Bahama Furniture”, “Tommy Bahama” and “Tommy Bahama Furniture Sale”. These links resolve to a page displaying material labeled as “Ads”, indicating that the page is being used to generate revenue for the Respondent through advertising sales.
- The Respondent’s registration of the disputed domain name presents as a classic case of typo squatting. The disputed domain name has been registered and is being used in bad faith, as the Respondent is intentionally attempting to capitalize on the goodwill of the TOMMY BAHAMA trademark to intentionally attract, for commercial gain, Internet users to its website, by creating confusion as to the source, sponsorship, affiliation or endorsement of its website.
- The Respondent has a history of registering domain names that have value to the rights holder of particular brands. The Complainant previously brought four UDRP procedures against the Respondent for domain names confusingly similar to the TOMMY BAHAMA trademark, and in all four UDRP proceedings the Panel found that the Respondent acted in bad faith and ordered transfers of the domain names.
- The Respondent attempted to conceal its identity by using a privacy service.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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 has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above.
The Complainant has proved that it owns trademark registrations for TOMMY BAHAMA, throughout the world including Panama where the Respondent is based.
The disputed domain name contains exactly the trademark TOMMY BAHAMA with the addition of the letter “M” at the end of “BAHAMA”, which constitutes a minor misspelling. As held by many UDRP decisions, a slight and immaterial mistyping is an insignificant variation in the domain name context, which does not obviate confusing similarity (see Apple Inc. v. Oakwood Services Inc., WIPO Case No. D2010-1917; Bahama Group, Inc v. Danny L, WIPO Case No. D2019-2397; Tommy Bahama Group, Inc v. Registration Private/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0197; Tommy Bahama Group, Inc v. Registration Private/Domain by Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0198; Tommy Bahama Group, Inc v. Registration Private/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0195; Tommy Bahama Group, Inc v. Registration Private/Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0501).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s TOMMY BAHAMA trademark, and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark. The Complainant asserts that Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the disputed domain name resolves to a website displaying links referencing TOMMY BAHAMA and other related products. The fact that these links resolve to a page displaying various advertisements, indicates that the domain name is being used to generate revenue for the Respondent through advertising sales.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, which includes:
“(iv) 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”.
In the present proceedings, the Respondent’s bad faith registration is established by the fact that the disputed domain name (i) purposefully incorporates the TOMMY BAHAMA trademark with minor misspelling variation and (ii) was registered long after this trademark became well known to consumers.
Given the well-established reputation of the Complainant’s TOMMY BAHAMA trademark (also recognized in Tommy Bahama Group, Inc v. Registration Private/Carolina Rodrigues, Fundacion Comercio Electronico, see supra; Tommy Bahama Group, Inc v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,see supra; Tommy Bahama Group, Inc v. Registration Private/Domain by Proxy, LLC/Carolina Rodrigues, Fundacion Comercio Electronico,see supra; Tommy Bahama Group, Inc v. Registration Private/Carolina Rodrigues, Fundacion Comercio Electronico, see supra), it is not conceivable that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name.
The Panel is convinced that the purpose of the Respondent’s registration of the disputed domain name is to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark. In fact, the registration of the disputed domain name is a clear example of typo squatting, where Respondent hopes in some way to make a profit or disrupt the business of Complainant from the inadvertent typing errors of Internet users who type the TOMMY BAHAMA trademark into their web browsers.
The above demonstrates bad faith use for Policy purpose.
The Respondent’s cybersquatting history and attempt to conceal its identity by using a privacy service further supports a finding of bad faith.
Based on the above, the Panel concludes that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <tommybahamam.com> be transferred to the Complainant.
Anna Carabelli
Sole Panelist
Date: November 17, 2020