Tommy John, Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1801001769865
Complainant is Tommy John, Inc. ("Complainant"), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation ("Respondent"), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ttommyjohn.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2018; the Forum received payment on January 31, 2018.
On Feb 01, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <ttommyjohn.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to email@example.com. Also on February 1, 2018, 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.
A timely Response was received and determined to be complete on February 20, 2018.
On February 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is engaged in the manufacture and sale of clothing under the trademark TOMMY JOHN, which it has used since 2007. Complainant owns registrations for the mark in the United States and many other jurisdictions, and also claims common law rights in the mark.
The disputed domain name <ttommyjohn.com> was registered by Respondent on December 17, 2017. It is being used for a website comprised of pay-per-click advertisements that link to Complainant and its competitors. Complainant states that it has not authorized Respondent to use its mark, and that Respondent is not commonly known by the disputed domain name. Complainant accuses Respondent of engaging in "typosquatting," the practice of registering and using a domain name that corresponds to a misspelling of a trademark for commercial gain, and notes that Respondent has been found to have engaged in bad faith domain name registration and use in numerous prior proceedings under the Policy.
Complainant contends on these grounds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
Respondent states as follows, in relevant part:
Respondent, a foreign company, owns a portfolio of generic and descriptive domain names which it acquired through lawful and fair methods. As part of its business practice, it has a well-known dispute resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe violate a trademark. And, it has a liberal transfer policy whereby it typically agrees to voluntarily transfer domain names, irrespective of the legitimacy of the complainant's arguments, in an effort to avoid the needless time and expense associated with litigation and administrative hearings. Transfers are typically done within one (1) business day.
Respondent was unaware of Complainant or its marks. Upon learning of this matter and, pursuant to its business practices, in an effort to resolve this matter expeditiously and without a substantial investment of time and expense by either party or the Panel, Respondent contacted Complainant to offer a voluntary transfer of the domain name at issue. Complainant did not accept this offer.
Therefore, without admitting fault or liability and without responding substantively to the allegations raised by Complainant herein, to expedite this matter for the Panel so that its time and resources are not otherwise wasted on this undisputed matter, Respondent stipulates that it is willing to voluntarily transfer the Domain Name to the Complainant. For the reasons stated below, Respondent respectfully requests that the transfer be ordered without findings of fact or conclusions as to Policy 4(a) other than the Domain Name be transferred.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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."
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.
Respondent has requested that in light of its unilateral consent to transfer, the Panel do so without making the findings required by Paragraph 4(a) of the Policy, and cites various prior decisions under the Policy as authority for the proposition that such an approach is appropriate. Prior decisions under the Policy are not binding upon this Panel, per paragraph 15(a) of the Rules; and as might be expected, support can be found in prior decisions for both sides of this question. See Enterprise Holdings, Inc. v. Muscari Holding Ltd. / Administration Dom, FA 1346463 (Forum Nov. 8, 2010).
The Panel notes that it has not been informed of a settlement agreed upon by the Parties pursuant to Paragraph 17 of the Rules, which would require termination of this proceeding. Furthermore, it appears to the Panel that Respondent has offered the consent to transfer in bad faith, in order to avoid having adverse findings entered against it, something that it has also attempted in prior proceedings under the Policy. See, e.g., Guess? IP Holder L.P. & Guess?, Inc. v. I S / ICS INC / GEORGE WASHERE / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation, FA 1758582 (Forum Dec. 13, 2017) (addressing merits notwithstanding respondent's consent to transfer); William Grant & Sons Ltd. v. Domain may be for sale, Check afternic.com Domain Admin, Domain Registries Foundation, D2017-1518 (WIPO Sept. 18, 2017) (same); Transamerica Corp. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation / Whois Foundation, FA 1700635 (Forum Dec. 5, 2016) (same); Arnold Clark Automobiles Ltd. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, Domain Registries Foundation, D2016-2035 (WIPO Nov. 24, 2016) (same); Cartier International A.G. v. Domain May be for Sale, Check Afternic.com, Domain Admin, Domain Registries Foundation, D2016-1534 (WIPO Sept. 19, 2016) (same); Patriot Supply Store, Inc., d/b/a My Patriot Supply v. Domain May be for Sale, Check Afternic.Com Domain Admin, Domain Registries Foundation, D2016-1573 (WIPO Sept. 7, 2016) (same); TGI Friday's of Minnesota, Inc v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation, FA 1671159 (Forum May 24, 2016) (same); American Woodmark Corp. v. Domain Registries Foundation / Domain May Be For Sale, Check Afternic.Com, Domain Admin, D2016-0321 (WIPO Apr. 25, 2016) (same); BBY Solutions, Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1618164 (Forum June 22, 2015) (same); 3M Co. v. Domain Registries Foundation c/o Domain Admin, FA 1614321 (Forum June 7, 2015) (same). (This list is representative rather than exhaustive.)
Under the circumstances, the Panel considers it appropriate to address the merits of the matter notwithstanding Respondent's request.
The disputed domain name <ttommyjohn.com> is, as Complainant contends, a misspelled version of Complainant's registered mark. The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name both incorporates and corresponds to a misspelled version of Complainant's mark, and its sole apparent use has been to display pay-per-click advertisements. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Complainant's registration of a domain name corresponding to a misspelled version of Complainant's mark, and its use of that domain name to display pay-per-click advertisements related to Complainant or its competitors, is indicative of bad faith under these provisions of the Policy. Under the circumstances, the Panel does not consider Respondent's assertion that it was unaware of Complainant or its marks to be credible. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ttommyjohn.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 23, 2018
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