Tommy John, Inc. v. Michael Griffith
Claim Number: FA2303002035942
Complainant is Tommy John, Inc. ("Complainant"), United States, represented by Stacy J. Grossman of Law Office of Stacy J. Grossman PLLC, United States. Respondent is Michael Griffith ("Respondent"), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tommyjohn.shop>, registered with NameCheap, Inc.
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 Forum electronically on March 15, 2023; Forum received payment on March 15, 2023.
On March 15, 2023, NameCheap, Inc. confirmed by email to Forum that the <tommyjohn.shop> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2023 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 postmaster@tommyjohn.shop. Also on March 16, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant is engaged in the manufacture and sale of clothing under the TOMMY JOHN mark, which is the nickname of its founder, Thomas John Patterson. Complainant has used the TOMMY JOHN mark since 2008 and owns various corresponding trademark registrations, including a United States registration issued in 2013 for TOMMY JOHN in standard character form.
The disputed domain name <tommyjohn.shop> was registered in February 2023; it is registered in the name of a privacy registration service on behalf of Respondent. The domain name is being used for a website that offers for sale goods similar to those offered by Complainant, in at least one instance using a photograph that appears to have been copied from Complainant's website. (The Panel notes that Respondent appears to have replaced the website content since the Complaint in this proceeding was filed. The site now displays and offers for sale what appear to be counterfeit versions of a different company's footwear products.) Complainant states that Respondent is not commonly known by the domain name, is not a licensee of Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <tommyjohn.shop> is identical or confusingly similar to its TOMMY JOHN mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical 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.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <tommyjohn.shop> corresponds to Complainant's registered TOMMY JOHN trademark, omitting the space and appending the ".shop" top-level domain. Such alternations are normally disregarded for purposes of assessing identicality or confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Arnold Clark Automobiles Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / JAIRO PACHECO, D2021-0027 (WIPO Mar. 17, 2021) (finding <arnoldclark.shop> identical to ARNOLD CLARK); Tommy John, Inc. v. PROXY PROTECTION LLC, FA 1776448 (Forum Apr. 18, 2018) (finding <tommyjohnoutlet.com> confusingly similar to TOMMY JOHN). The Panel considers the disputed domain name to be identical to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that promotes competing and likely counterfeit products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Tommy John, Inc. v. PROXY PROTECTION LLC, supra (finding lack of rights or interests in similar circumstances).
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."
Respondent used a privacy registration service to register a domain name corresponding to Complainant's mark and is using it for a website that attempts to pass off as Complainant and offers for sale competing and likely counterfeit products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Tommy John, Inc. v. PROXY PROTECTION LLC, supra (finding bad faith registration and use in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tommyjohn.shop> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 10, 2023
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