Tommy Bahama Group, Inc. v. Artistic Cigar Inc c/o Jorge Doetsch
Claim Number: FA1102001370849
Complainant is Tommy Bahama Group, Inc. (“Complainant”), represented by Jessica E. Lewis of Alston & Bird, LLP, Georgia, USA. Respondent is Artistic Cigar Inc c/o Jorge Doetsch (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tommybahamacigars.com>, registered with GoDaddy.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2011; the National Arbitration Forum received payment on February 2, 2011.
On February 4, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <tommybahamacigars.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tommybahamacigars.com. Also on February 7, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tommybahamacigars.com> domain name is confusingly similar to Complainant’s TOMMY BAHAMA mark.
2. Respondent does not have any rights or legitimate interests in the <tommybahamacigars.com> domain name.
3. Respondent registered and used the <tommybahamacigars.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tommy Bahama Group, Inc., designs, markets, and sells island-inspired clothing and other accessories. Complainant registered the TOMMY BAHAMA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,502,989 issued September 16, 2008) and conducts its business under this mark.
Respondent, Jorge Doetsch, registered the <tommybahamacigars.com> domain name on December 6, 2009. The disputed domain name resolves to a parked website. The website displays links to Complainant’s website as well as websites of Complainant’s competitors.
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 contends that it has rights in the TOMMY BAHAMA mark because it registered the mark with the USPTO (e.g., Reg. No. 3,502,989 issued September 16, 2008). Previous panels have found that registration of a mark with a federal trademark authority sufficiently establishes rights in the mark. Therefore, the Panel concludes that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that Respondent’s <tommybahamacigars.com> domain name is confusingly similar to the TOMMY BAHAMA mark. Respondent simply removed the space between the terms of Complainant’s mark, and added the generic term “cigar” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that removing the space between the terms of a mark, as well as adding generic terms to that mark, do not result in a unique domain name. Furthermore, the Panel concludes that the affixation of a gTLD is inapposite to a Policy ¶ 4(a)(i) analysis and that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has met its burden of proof by making a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name. Based on previous decisions, the burden now shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). In this case, Respondent has not only failed to offer evidence showing its legitimate rights or interests in the mark but, has instead failed to answer the complaint in any fashion, which allows this Panel to assume that it lacks any rights or interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the entire record to ascertain whether Respondent does retain rights or legitimate interests in the <tommybahamacigars.com> domain name according to the factors enumerated in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <tommybahamacigars.com> domain name. Respondent has not offered any evidence to rebut this contention and the WHOIS information does not include any information which supports the finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <tommybahamacigars.com>domain name. Respondent’s disputed domain name resolves to a site offering links to both Complainant’s website and the sites of Complainant’s competitors. Previous panels have determined that this use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <tommybahamacigars.com>domain name under Policy ¶4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant argues that Respondent’s <tommybahamacigars.com> domain name disrupts its business, constituting bad faith registration and use. Respondent’s confusingly similar domain name resolves to a site offering links to both Complainant and competitors of Complainant. Internet users may become confused when they click on a link leading to Complainant’s competitor when they are actually seeking out Complainant’s goods, and then purchase a competitor’s goods instead. The Panel finds that this use does in fact disrupt Complainant’s business constituting bad faith registration and use under Policy ¶4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent is gaining commercially from the operation of the disputed domain name. The disputed domain name resolves to a site offering both links to Complainant and its competitors. Respondent presumably receives revenue for the maintenance of the site. Therefore, the Panel finds that Respondent has registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) due to the fact that it is gaining commercially from the operation of the confusingly similar domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tommybahamacigars.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 17, 2011
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