DECISION

 

Tommy John, Inc. v. no / lar frank

Claim Number: FA2604002216551

 

PARTIES

Complainant is Tommy John, Inc. ("Complainant"), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman PLLC dba SGIP, New York, USA. Respondent is no / lar frank ("Respondent"), Philippines.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tommyjohnshop.com> (the "Domain Name"), registered with NameSilo, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nick J. Gardner as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 17, 2026; Forum received payment on April 17, 2026.

 

On April 17, 2026, NameSilo, LLC confirmed by e-mail to Forum that the <tommyjohnshop.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On April 20, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2026 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@tommyjohnshop.com. Also on April 20, 2026, 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 May 12, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nick J. Gardner 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that the Domain Name is confusingly similar to its TOMMY JOHN mark, which is the subject of multiple U.S. trademark registrations and extensive common law rights developed through continuous use since 2008. Complainant argues that the Domain Name incorporates the TOMMY JOHN mark in its entirety and merely appends the generic or descriptive word "shop" and the gTLD ".com," neither of which serves to distinguish the Domain Name from the mark or to negate a finding of confusing similarity.

 

On the question of rights or legitimate interests, Complainant contends that Respondent has none. Respondent is not a licensee or authorised user of the TOMMY JOHN mark, is not commonly known by the Domain Name, and is not making any bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the resolving website reproduces Complainant's branding and product imagery without authorisation and offers what appear to be counterfeit or unauthorised versions of Complainant's goods.

 

On bad faith, Complainant contends that Respondent had actual knowledge of the TOMMY JOHN mark at the time of registration, as evidenced by the wholesale copying of Complainant's website design and branding on the resolving website. Complainant argues that the use of the Domain Name to operate a counterfeit or fraudulent e-commerce site constitutes bad faith under Policy ¶ 4(b)(iv), as Respondent is intentionally attempting to attract internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the resolving website. Complainant further notes its track record of successful UDRP proceedings against third parties registering domains incorporating the TOMMY JOHN mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds the following facts established by the evidence in the record:

1. Complainant owns valid and subsisting United States trademark registrations for the TOMMY JOHN mark, with rights dating from at least 2008 in commerce and registration from 2013, covering clothing and retail services. See for example US registration No 5477161 registered May 22, 2018.

2. Complainant has used the TOMMY JOHN mark continuously and extensively in commerce for more than 15 years in connection with the manufacture and sale of apparel and related goods.

3. The Domain Name was registered on March 30, 2026 — long after Complainant's trademark rights were established.

4. The Domain Name incorporates the entirety of Complainant's TOMMY JOHN mark and appends only the generic or descriptive term "shop."

5. The Domain Name resolves to a website that reproduces the visual design, branding, logo, product images, and overall trade dress of Complainant's authentic website at <www.tommyjohn.com>, creating a false impression of affiliation with or authorisation by Complainant.

6. The resolving website purports to offer Tommy John branded products at heavily discounted prices without any authorisation from Complainant, and displays no disclaimer or notice of non-affiliation. The website appears designed to deceive consumers into purchasing counterfeit, unauthorised, or non-existent goods.

7. Respondent has not been authorised, licensed, or otherwise permitted by Complainant to register any domain name incorporating the TOMMY JOHN mark or to use the mark in any manner.

8. Respondent failed to respond to the Complaint and has offered no explanation for its conduct.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Jurisprudential Overview 3.1 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint.").

 

Identical and/or Confusingly Similar

Complainant has established rights in the TOMMY JOHN mark through multiple U.S. trademark registrations and through its continuous and extensive use of the mark in commerce since at least 2008. Ownership of a trademark registration is generally sufficient to demonstrate the requisite rights under paragraph 4(a)(i) of the Policy. See Farmlane Brands, LLC v. Helene Isbell Biggane, FA 1996757 (Forum July 12, 2022).

 

The Domain <tommyjohnshop.com> incorporates Complainant's TOMMY JOHN mark in its entirety and appends only the generic or descriptive term "shop." The addition of a generic or descriptive term to a complainant's mark does not negate a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."). The word "shop" is, if anything, an aggravating factor, as it invites consumers to believe they are visiting an official Tommy John retail outlet. The addition of the gTLD ".com" is a standard registration requirement and is disregarded in the confusing similarity analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), it is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).

 

Complainant has demonstrated that Respondent is not authorized to use the TOMMY JOHN mark and has no relationship with Complainant. The WHOIS information identifies Respondent as " no / lar frank " which bears no resemblance to the Domain Name. There is no evidence that Respondent has been commonly known by the Domain Name or has acquired any trademark rights in "TOMMY JOHN" or any similar term. Accordingly, Complainant has established a prima facie case under Policy ¶ 4(a)(ii), and the burden shifts to Respondent to demonstrate rights or legitimate interests. Respondent has failed to respond and therefore has failed to demonstrate any rights or legitimate interests.

 

The Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i). Offering counterfeit items cannot be a bona fide offering. See Solstice Marketing Corp. v. Marc Salkovitz d/b/a Image Media, LLC, FA 040087 (Forum Aug. 31, 2007) (respondent not commonly known by disputed domain name because respondent lacked authorization to use complainant's registered service mark).

 

The Panel finds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii). Respondent's use is clearly commercial.

 

Respondent has failed to rebut Complainant's prima facie case or to demonstrate any rights or legitimate interests in the disputed domain name.

 

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets out four non-exclusive circumstances that constitute evidence of bad faith registration and use. The Panel finds that Respondent's conduct falls squarely within Policy ¶ 4(b)(iv), which addresses the situation where a registrant has "intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location."

 

There can be no doubt that Respondent had actual knowledge of Complainant and its TOMMY JOHN mark when it registered the Domain Name on March 30, 2026. The TOMMY JOHN mark is well-known in the apparel sector, and Respondent's wholesale copying of Complainant's website — including its branding, logo, product names, product images, and trade dress — demonstrates beyond any reasonable inference that Respondent was familiar with Complainant's business at the time of registration. It is inconceivable that this was coincidence. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant's well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

The use of the Domain Name to resolve to what appears to be a counterfeit or fraudulent e-commerce site is particularly egregious. By reproducing Complainant's brand identity in its entirety on the resolving website, displaying Complainant's products at artificially discounted prices, and providing no indication of non-affiliation, Respondent plainly seeks to attract consumers looking for Complainant's goods and to divert them for Respondent's commercial gain — whether by collecting payment for goods never delivered, by selling counterfeit products, or by some other means of consumer deception. This conduct constitutes bad faith use within the meaning of Policy ¶ 4(b)(iv). See Brooks Sports, Inc. v. Redacted for Privacy, FA 1930066 (Forum Feb. 15, 2021) ("[T]he Panel recalls Complainant provides screenshots of Respondent's resolving webpage, in which Respondent displays the BROOKS Mark in the banner and displays images of Complainant's products offered for sale, using Complainant's trademarks, product name, and product images in the listings.... Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).").

 

The Panel further notes that Complainant has brought numerous prior UDRP proceedings against third parties registering domains incorporating its TOMMY JOHN mark, and that the factual pattern here closely mirrors those earlier cases in which the Panel found bad faith. Respondent's default — offering no explanation for its conduct — reinforces the Panel's conclusion. The totality of the circumstances compels a finding of bad faith registration and use.

 

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tommyjohnshop.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nick J. Gardner Panelist

Dated: May 19, 2026