Tommy Bahama Group, Inc. v. kelly Pergrem
Claim Number: FA2307002051950
Complainant is Tommy Bahama Group, Inc. (“Complainant”), represented by Crystal Genteman of Kilpatrick Townsend & Stockton LLP, Georgia, USA. Respondent is kelly Pergrem (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tommyibahamaus.us> and <tommyibahamacom.us>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on July 5, 2023; Forum received payment on July 5, 2023.
On July 10, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <tommyibahamaus.us> and <tommyibahamacom.us> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2023 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@tommyibahamaus.us, postmaster@tommyibahamacom.us. Also on July 11, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the 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
Complainant contends as follows:
Complainant, Tommy Bahama Group, Inc. sells upscale island-inspired apparel and related accessories.
Complainant has rights in the TOMMY BAHAMA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and other agencies worldwide.
Respondent’s <tommyibahamaus.us> and <tommyibahamacom.us> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark while adding the letter “i” and either the letters “us” or “com” along with the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <tommyibahamaus.us> and <tommyibahamacom.us> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized or licensed Respondent to use its TOMMY BAHAMA mark in the at-issue domain names. Respondent does not use the at-issue domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead uses one domain names to pass off as Complainant and fails to make active use of the other domain name.
Respondent registered or uses the <tommyibahamaus.us> and <tommyibahamacom.us> domain names in bad faith. Respondent uses the domain names to attracts users for commercial gain while creating a likelihood of confusion. Additionally, Respondent fails to make active use of one domain name and engages in typosquatting. Furthermore, Respondent registered the domain names with actual knowledge of Complainant’s rights in the TOMMY BAHAMA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TOMMY BAHAMA trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in TOMMY BAHAMA.
Respondent uses the at-issue domain names to pass itself off as Complainant and offer goods, and to hold passively.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration along with other national trademark registrations for its TOMMY BAHAMA trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the TOMMY BAHAMA mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <tommyibahamaus.us> and <tommyibahamacom.us> domain names each contain a variant of Complainant’s TOMMY BAHAMA trademark where the mark’s space is replaced with the letter “i”. Either the term “us” or the term “com” follow the trademark variant, and both domain names conclude with the “.us” top-level domain name. The differences between either of the at-issue domain names and Complainant’s TOMMY BAHAMA trademark are insufficient to distinguish either domain name from TOMMY BAHAMA for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <tommyibahamaus.us> and <tommyibahamacom.us> domain names are each confusingly similar to Complainant’s TOMMY BAHAMA trademark. See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain names identifies their registrant as “Kelly Pergrem” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by either at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain names for the purposes of Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent’s at-issue domain names have addressed or are intended to address a website that is designed to appear as if authorized by Complainant. Notably, the website previously operated at <tommyibahamaus.us> was an online store where Complainant’s TOMMY BAHAMA trademark, logo, and images of Complainant’s products were displayed and Respondent offered counterfeit or unauthorized versions of TOMMY BAHAMA products for sale. Respondent’s use of the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a non-commercial or fair use under Policy ¶ 4(c)(iv). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). As it would be a trivial matter for Respondent to likewise use the <tommyibahamacom.us> domain name, Complainant’s should not have to wait while Respondent prepares to do so. Additionally, holding the <tommyibahamacom.us> domain name passively, in itself, fails to indicate either a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a non-commercial or fair use under Policy ¶ 4(c)(iv). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of each at-issue domain names pursuant to Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, circumstance are present which allow the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name, pursuant to the Policy.
First, by misappropriating Complainant’s trademark to use in its domain names and associated copycat website Respondent shows Respondent is intent on passing itself off as Complainant to thereby attract consumers that might purchase Respondent’s unauthorized or counterfeit TOMMY BAHAMA products, or to otherwise defraud third party internet users. Respondent’s use of the at-issue domain names to deceive internet users and direct them away from Complainant and to Respondent disrupts Complainant’s business and shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also, Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also, Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Even if, Respondent had no intention of delivering any goods to those ordering from its bogus website, Respondent’s bad faith is nevertheless demonstrated. See E*Trade Financial Holdings, LLC v. Alex Drown, FA 2013318 (Forum Oct. 21, 2022) (finding that a website offering fake financial services was evidence of bad faith registration and use of the at-issue domain name).
Moreover, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in TOMMY BAHAMA. Respondent’s prior knowledge is evident given TOMMY BAHAMA’s notoriety; given that Respondent used or intends to use the domain names to misappropriate Complainant’s trademark, logo and images to pass itself off as Complainant; and given Respondent’s multiple domain name registrations that are confusingly similar to Complainant’s TOMMY BAHAMA mark. Respondent’s use of the domain names to address websites displaying Complainant’s trademark and logo as well as images of Complainant’s merchandise in support of Respondent’s sale of unauthorized or counterfeit TOMMY BAHAMA merchandise makes it inconceivable that Respondent was unaware of the TOMMY BAHAMA trademark when it registered the at-issue domain names. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <tommyibahamaus.us> and <tommyibahamacom.us> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tommyibahamaus.us> and <tommyibahamacom.us> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 7, 2023
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