Tommy Bahama Group, Inc. v. Mark Aronson
Claim Number: FA0511000601435
Complainant is Tommy Bahama Group, Inc. (“Complainant”), represented by Robert L. Lee, of Alston & Bird, LLP, 1201 West Peachtree Street, Atlanta, GA 30309. Respondent is Mark Aronson (“Respondent”), 14960 E. Waterford Dr., Davie, FL 33331.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tommybahamasunglasses.com> and <tommybahamaeyewear.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 28, 2005.
On November 28, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <tommybahamasunglasses.com> and <tommybahamaeyewear.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org and email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
A. Tommy Bahama and Its Well-Known TOMMY BAHAMA Mark
Since as early as 1993, Tommy Bahama Group, Inc. (“Tommy Bahama”) has used the trademark and service mark TOMMY BAHAMA (the “TOMMY BAHAMA Mark”) in connection with its upscale island-inspired apparel and related accessories. Over the years, Tommy Bahama 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, home furnishings, and sailboats.
Tommy Bahama presently operates more than fifty TOMMY BAHAMA retail stores for its apparel and accessories in locations throughout the United States and Canada. More than ten of these stores are located in the State of Florida alone, three of which were open – and one in the final stages of development – prior to May 28, 2000, when the TOMMYBAHAMASUNGLASSES and TOMMYBAHAMAEYEWEAR.COM domain names (“the Domain Names”) were registered. Id. In particular, the Naples TOMMY BAHAMA store opened in December 1995, the Sarasota store in February 1997, the Fort Lauderdale store in February 1999, and the Tampa store in June 2000. Id. Further, Tommy Bahama employs a network of independent sales representatives who are authorized to sell TOMMY BAHAMA apparel and accessories to various other retail outlets and corporate accounts, including resorts and spas, hotels, golf pro shops, and upscale department store chains, such as Neiman Marcus, Saks Fifth Avenue, Macy’s, and Nordstrom. Many of these department store chains, as well as other retail outlets, have stores located in the State of Florida that were carrying TOMMY BAHAMA apparel and accessories as of May 2000.
In fiscal year 2004 alone, Tommy Bahama’s net sales of TOMMY BAHAMA goods and services totaled approximately $370 million. Moreover, Tommy Bahama has spent millions of dollars promoting and marketing 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. Consequently, goods and services sold in connection with the TOMMY BAHAMA Mark are recognized worldwide as being associated with Tommy Bahama and its goodwill, and the TOMMY BAHAMA Mark is an asset of substantial value to Tommy Bahama.
As a result of Tommy Bahama’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 Mark. In recognition of these rights, the United States Patent and Trademark Office (“USPTO”) has issued Tommy Bahama no fewer than twenty-five registrations for marks that consist in whole or in part of the TOMMY BAHAMA Mark, including, e.g. U.S. Reg. Nos. 1,802,812 (for apparel); 2,492,771 (for retail stores); 2,641,036 (for eyewear and sunglasses); 2,551,210 (for watches); 2,387,649 (for luggage, travel accessories, and wallets); and 2,462,870 (for furniture). Tommy Bahama’s registrations are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by Tommy Bahama. See 15 U.S.C. §§ 1057(b), 1072. Tommy Bahama also owns registrations for its TOMMY BAHAMA Mark in more than fifteen foreign countries, including Australia, the Bahamas, Canada, China, France, Germany, Italy, Japan, Mexico, and the United Kingdom. Indeed, Tommy Bahama is unaware of any other person or entity anywhere in the world with a legitimate right to use the TOMMY BAHAMA Mark in any form or manner.
As a complement to Tommy Bahama’s retail stores, Tommy Bahama also operates an interactive web site under the domain name TOMMYBAHAMA.COM (the “TOMMY BAHAMA Web site”). This site features information about TOMMY BAHAMA apparel and accessories; retail store locations; an online community for Tommy Bahama enthusiasts; and customer service and product care information. The TOMMY BAHAMA Web is a heavily trafficked site, averaging nearly 50,000 unique visitors per month, with approximately 550,000 unique visitors over the past twelve months. When Tommy Bahama attempted to register the Domain Names to promote its TOMMY BAHAMA products, it discovered Respondent.
B. Respondent and Its Unlawful Activities
Well after Tommy Bahama began using its famous TOMMY BAHAMA Mark, and without Tommy Bahama’s knowledge or consent, Respondent registered the Domain Names. For over five years, Respondent has made no use of the Domain Names.
After discovering Respondent, counsel for Tommy Bahama sent an email to Respondent, detailing Tommy Bahama’s rights in the TOMMY BAHAMA Mark and demanding that Respondent immediately transfer the Domain Names to Tommy Bahama. To date, neither Tommy Bahama nor its counsel have received any response from Respondent.
Visitors to the web pages associated with the Domain Names are greeted with placeholder sites hosted by Verio, Inc., an Internet services and web hosting company. Further, the placeholder sites for the Domain Names host links to various web sites that promote and offer Verio’s services. Respondent may receive a fee each time an Internet user follows a link from the Domain Names to one of Verio’s web sites, or when Internet users who follow such links purchase goods or services from one of Verio’s web sites.
Pursuant to the ICANN UDRP Policy, Tommy Bahama must establish the following to obtain the relief it requests in this action: (1) that the Domain Names are identical or confusingly similar to a trademark or service mark in which Tommy Bahama owns rights; (2) that Respondent has no rights or legitimate interests in the Domain Names; and (3) that Respondent has registered and used the Domain Names in bad faith. Tommy Bahama submits that its Complaint easily satisfies each of these requirements.
C. The Domain Names Are Confusingly Similar to the TOMMY BAHAMA Mark.
As established above, Tommy Bahama owns valid and enforceable trademark and service mark rights in the TOMMY BAHAMA Mark for use in connection with apparel and accessories, and Tommy Bahama acquired these rights well prior to the date on which Respondent registered the Domain Names. See Janus Int’l Holding Co. v. Rademacher, No. D2002-0201 (WIPO March 5, 2002) (finding that registration of mark is prima facie evidence of validity, which creates rebuttable presumption that mark is inherently distinctive, and respondent has burden of refuting this assumption).
Consumers who see the Domain Names are certain to associate the names with Tommy Bahama because the Domain Names incorporate the TOMMY BAHAMA Mark in its entirety. The only difference between the TOMMY BAHAMA Mark and the Domain Names is the addition, in the Domain Names, of the descriptive or generic terms “sunglasses” and “eyewear.” It is well established, however, that likelihood of confusion between a mark and a domain name is not eliminated, or even necessarily reduced, by the addition of generic terms. See, e.g., Am. Online, Inc. v. Anytime Online Traffic Sch., No. FA146930 (Nat’l Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming claim of confusing similarity); Trump v. Sports Mgmt., No. FA0111000102516 (Nat’l Arb. Forum, January 8, 2002) (finding domain name <trumpplazasportsbook.com> confusingly similar to complainant’s TRUMP PLAZA mark because “it incorporates the entirety of Complainant’s mark and merely adds the descriptive term ‘sportsbook’”). Indeed, such addition only compounds the likelihood of confusion here, since the addition is merely descriptive of goods (eyewear) actually offered by Tommy Bahama under the TOMMY BAHAMA Mark. See UGG Holdings, Inc. v. Sharpe d/b/a Australian Aura & DigiCommander Corp., No. FA0401000227667 (Nat’l Arb. Forum March 9, 2004) (finding that addition of words “footwear” or “footware” to Complainant’s UGG trademark were insufficient to distinguish domain names from trademark).
Tommy Bahama’s Complaint therefore readily satisfies the first element of the Policy.
D. Respondent Has No Rights or Legitimate Interests in the Domain Names.
Respondent is not associated or affiliated with Tommy Bahama, nor has Tommy Bahama ever authorized, licensed or permitted Respondent to register or use the Domain Names or any other mark or name that is confusingly similar to the TOMMY BAHAMA Mark. Moreover, from the content of Respondent’s Web site, it is apparent that Respondent is not, nor has it ever been, commonly known by the names “Tommy Bahama,” “Tommy Bahama Sunglasses,” or “Tommy Bahama Eyewear,” nor does Respondent’s WHOIS record make any indication that it is known by those names. See RMO, Inc. v. Burbridge, No. 96949 (Nat’l Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); Tercent, Inc. v. Lee Yi, No. 0303000139720 (Nat’l Arb. Forum Feb. 10, 2003) (finding respondent was not commonly known by disputed name where “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name”). Similarly, a search of relevant business and trademark records show no indication that Respondent is known by the above names.
Furthermore, upon information and belief, Respondent has never used, or even made preparations to use, the Domain Names in connection with any bona fide offering of goods and services, nor has Respondent made a legitimate non-commercial or fair use of the Domain Names. Indeed, at present Respondent makes no use whatsoever of the Domain Names, which further evidences its lack of rights or legitimate interests. See Black v. T1 Comm. Co., No. FA0304000154144 (Nat’l Arb. Forum June 17, 2003); Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, No. D2000-1244 (WIPO Nov. 11, 2000) (finding that ‘merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy’); Chanel, Inc. v. Heyward, No. D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where ‘Respondent registered the domain name and did nothing with it’).
The only use that Respondent has ever made of the Domain Names has been as placeholder sites that host links to Verio’s web site that offers Internet services and web hosting. Using the Domain Names, however, to redirect Internet traffic to third party web sites is not a legitimate non-commercial or bona fide use. See American Express Co. v. (This Domain is For Sale) Joshuathan Invs., Inc., No. FA0304000154647 (Nat’l Arb. Forum June 3, 2003) (use of disputed domain names to redirect Internet users to commercial web sites is not legitimate noncommercial or fair use).
Respondent thus has no rights or legitimate interests in the Domain Names.
E. Respondent Has Registered and Used the Domain Names in Bad Faith.
Tommy Bahama’s Complaint plainly meets the requirements for establishing bad faith pursuant to ICANN Policy ¶4(b). The circumstances enumerated in ¶4(b), however, are not exhaustive, and panels may consider other circumstances that support a finding that Respondent acted in bad faith. See, e.g., Telstra Corp. v. Nuclear Marshmallows, No. D2000-0003 (WIPO Feb. 18, 2000) (noting that circumstances described in 4(b) are “without limitation” and that “other circumstances can be evidence” of bad faith). Respondent’s bad faith conduct is evident for a number of reasons.
First, in light of the substantial use and notoriety of the TOMMY BAHAMA Mark, it is inconceivable Respondent could have registered the Domain Names without knowledge of Tommy Bahama’s rights in the TOMMY BAHAMA Mark. Indeed, by the time Respondent registered the Domain Names in May of 2000, Tommy Bahama had already opened three TOMMY BAHAMA retail stores in the State of Florida, and many department store chains as well as other retail outlets located in Florida were also carrying TOMMY BAHAMA apparel and accessories. Thus, it is difficult to imagine a reason why Respondent chose the Domain Names if not to suggest an association, or create a likelihood of confusion with the TOMMY BAHAMA Mark. See, e.g., Reuters Ltd. v. Teletrust IPR Ltd., No. D2000-0471 (WIPO Sept. 8, 2000) (finding as evidence of bad faith respondent’s awareness of complainant’s well-known mark at time of registering domain name and awareness of deception and confusion that would inevitably follow if he used domain name). Moreover, even if Respondent were to claim ignorance of Tommy Bahama, Tommy Bahama’s numerous registrations for the TOMMY BAHAMA Mark constitute constructive notice to Respondent. See Marriott Int’l, Inc. v. Momm Amed Ia, No. FA0009000095573 (Nat’l Arb. Forum Oct. 23, 2000) (recognizing that evidence of bad faith includes actual or constructive knowledge of complainant’s use of its commonly known mark when registering domain name); Samsonite Corp. v. Colony Holding, No. FA0003000094313 (Nat’l Arb. Forum April 17, 2000) (same).
Second, Respondent’s registration of the Domain Names is nothing more than a blatant attempt to trade on the goodwill and notoriety associated with the TOMMY BAHAMA Mark. Indeed, “[p]rior panels have found bad faith from the circumstance of a registrant’s selecting a domain name confusingly similar to a complainant’s mark and that would likely be associated with complainant’s well-known products or services.” State Farm Mutual Auto. Ins. Co. v. Lee, No. FA0409000335445 (Nat’l Arb. Forum November 3, 2004).
Finally, Respondent registered the Domain Names more than seven years after Tommy Bahama acquired rights in its distinctive mark. Since that time, however, Respondent has made no use of the Domain Names. This failure also evidences Respondent’s bad faith. See Gen Motors Corp. v. Vette Owners, No. D2000-0595 (WIPO Oct. 20, 2000) (“[w]hen a domain name comprised of a genuinely famous mark is registered and then simply held by the registrant with no use at all, that itself constitutes bad faith and cybersquatting.”).
For the above reasons, Respondent undoubtedly acted in bad faith when it registered the Domain Names.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tommy Bahama Group, Inc., designs and sells upscale island-inspired apparel and related accessories. In 2004, Complainant sold over $370 million worth of apparel across the United States and Canada. Complainant has registered the TOMMY BAHAMA mark (Reg. No. 1,802,812 issued November 2, 1993) with the United States Patent and Trademark Office (“USPTO”) in connection with these products.
Respondent registered both the <tommybahamasunglasses.com> and <tommybahamaeyewear.com> domain names on May 28, 2000. Neither of Respondent’s domain names resolves to active web pages.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the TOMMY BAHAMA mark pursuant to Policy ¶4(a)(i) through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning”).
Complainant contends that the <tommybahamasunglasses.com> and <tommybahamaeyewear.com> domain names are confusingly similar to Complainant’s mark. Both of Respondent’s disputed domain names feature the entire TOMMY BAHAMA mark and add a generic term describing products that Complainant designs and sells. The Panel finds that the addition of the generic terms “sunglasses” and “eyewear” fails to sufficiently distinguish Respondent’s <tommybahamasunglasses.com> and <tommybahamaeyewear.com> domain names from Complainant’s mark pursuant to Policy ¶4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <tommybahamasunglasses.com> and <tommybahamaeyewear.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel infers Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends Respondent has failed to put either of the disputed domain names to use the past five years. In the absence of evidence to suggest otherwise, the Panel finds that registration alone is insufficient to confer rights and legitimate interests pursuant to Policy ¶4(a)(ii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
Furthermore, no affirmative evidence has been set forth showing Respondent is commonly known by either of the <tommybahamasunglasses.com> and <tommybahamaeyewear.com> domain names. As a result, Respondent has failed to show evidence of rights or legitimate interests in the disputed domain names pursuant to Policy ¶4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent’s domain names do not resolve to active websites. In cases of passive holding, Panels have found that bad faith registration and use can be inferred pursuant to Policy ¶4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tommybahamasunglasses.com> and <tommybahamaeyewear.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 5, 2006