DECISION

 

Tommy John, Inc. v. no / lar frank

Claim Number: FA2607002232912

 

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 NAMES

The domain names at issue are <tommyjohnsale.com> and <tommyjohnusmalls.com>, registered with NameSilo, LLC.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 15, 2026; Forum received payment on July 15, 2026.

 

On July 16, 2026, NameSilo, LLC confirmed by e-mail to Forum that the <tommyjohnsale.com> and <tommyjohnusmalls.com> 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On July 22, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@tommyjohnsale.com, postmaster@tommyjohnusmalls.com. Also on July 22, 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 August 12, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is a business engaged in the manufacture and sale of clothing under the trademark TOMMY JOHN. Due to Complainant's over 15 years of continuous use and significant investment, the TOMMY JOHN trademark has built substantial goodwill and is widely recognized as a premium clothing brand with strong consumer loyalty. Complainant has rights in the TOMMY JOHN mark based upon numerous trademark registrations around the world, including registration with the USPTO (e.g., Reg. No. 4,338,089, registered May 21, 2013, in Class 25). The disputed domain names are confusingly similar to Complainant's TOMMY JOHN mark because they contain Complainant's mark in its entirety, adding the generic terms "sale" and "us malls," and the ".com" gTLD.

 

ii) Respondent has no legitimate interests in the disputed domain names. Complainant's prior rights in the mark precede Respondent's registration of the disputed domain names. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized or licensed to Respondent any rights in the TOMMY JOHN marks. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain names are used to pass Respondent off as Complainant. They included identical content at the time that Complainant first reviewed the two sites on June 23, 2026; however, the <tommyjohnusmalls.com> site resolves to an inactive website as of the date of this Complaint. Respondent has reproduced Complainant's TOMMY JOHN branding, logo, product imagery, and site structure, purporting to offer Complainant's clothing products for sale at deeply discounted prices and without any disclaimer of affiliation. The webpage tab at the disputed domain name <tommyjohnsale.com> looks identical to Complainant's website page tab, incorporating Complainant's registered "T" design. Furthermore, the use of the TOMMY JOHN mark is in the same font. The images on the websites at the disputed domain names make it clear that the resolving websites offer or offered unauthorized or counterfeit versions of Complainant's goods.

 

iii) Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its websites, constituting bad faith registration and use. Respondent had actual knowledge of Complainant's rights in the TOMMY JOHN mark when registering the disputed domain names given (i) the fame of Complainant's TOMMY JOHN mark when Respondent registered the disputed domain names, (ii) the fact that Respondent used or is using the disputed domain names in an attempt to offer goods that are identical to the goods covered by Complainant's registered trademarks, and (iii) the fact that Respondent registered disputed domain names that are confusingly similar to Complainant's TOMMY JOHN mark. Moreover, Respondent already has an adverse decision against it, having registered the domain <tommyjohnshop.com> on March 30, 2026.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain names <tommyjohnsale.com> and <tommyjohnusmalls.com> were registered on June 10, 2026, and April 13, 2026, respectively.

 

2. Complainant has established rights in the TOMMY JOHN mark based upon numerous trademark registrations around the world, including registration with the USPTO (e.g., Reg. No. 4,338,089, registered May 21, 2013, in Class 25).

 

3. The disputed domain names included identical content at the time that Complainant first reviewed the two sites on June 23, 2026; however, the <tommyjohnusmalls.com> site resolves to an inactive website as of the date of this Complaint.

 

4. Respondent has reproduced Complainant's TOMMY JOHN branding, logo, product imagery, and site structure, purporting to offer Complainant's clothing products for sale at deeply discounted prices and without any disclaimer of affiliation on the websites at the disputed domain names.

 

5. The webpage tab at the disputed domain name <tommyjohnsale.com> looks identical to Complainant's website page tab, incorporating Complainant's registered "T" design. Furthermore, the use of the TOMMY JOHN mark is in the same font.

 

6. Respondent used or is using the disputed domain names to facilitate unauthorized sales of Complainant's goods or counterfeit products.

 

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 claims rights in the TOMMY JOHN mark based upon numerous trademark registrations around the world, including registration with the USPTO (e.g., Reg. No. 4,338,089, registered May 21, 2013, in Class 25). Registration of a mark with the USPTO is sufficient to establish rights in that mark per the Policy ¶ 4(a)(i). Complainant provides copies of its USPTO registrations for the TOMMY JOHN mark. Therefore, the Panel finds that Complainant has established rights in the mark under the Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain names <tommyjohnsale.com> and <tommyjohnusmalls.com> are confusingly similar to Complainant's TOMMY JOHN mark because they contain Complainant's mark in its entirety, adding the generic terms "sale" and "us malls," and the ".com" gTLD.

 

The addition of the generic terms "sale" and "us malls," and the ".com" gTLD does not negate the confusing similarity of the disputed domain names. The Panel finds that the disputed domain names can still be found confusingly similar to Complainant's mark under the Policy ¶ 4(a)(i), despite the addition of the generic terms and the ".com" gTLD. 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."). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's mark under the Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Overview 3.1 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS data lists "no / lar frank" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent used or uses the disputed domain names to impersonate Complainant and sold or sells unauthorized products of Complainant or counterfeit goods. The Panel notes that passing off as Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per the Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business); 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, which were either counterfeit products or legitimate products being resold without authorization).

 

The Panel notes that the disputed domain names included identical content at the time that Complainant first reviewed the two sites on June 23, 2026; however, the <tommyjohnusmalls.com> site resolves to an inactive website as of the date of this Complaint. Respondent has reproduced Complainant's TOMMY JOHN branding, logo, product imagery, and site structure, purporting to offer Complainant's clothing products for sale at deeply discounted prices and without any disclaimer of affiliation on the websites at the disputed domain names. The webpage tab at the disputed domain name <tommyjohnsale.com> looks identical to Complainant's website page tab, incorporating Complainant's registered "T" design. Furthermore, the use of the TOMMY JOHN mark is in the same font.

 

While the authenticity of the products is unknown, even if the products offered for sale at the websites associated with the disputed domain names are Complainant's genuine products, the Panel finds that Respondent's impersonation of Complainant and fraudulent use of the disputed domain names by mimicking Complainant's website, without the need to apply the Oki Data test (see Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)), does not constitute a use in connection with a bona fide offering of goods or services under the Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under the Policy ¶ 4(c)(iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Complainant contends that Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website, constituting bad faith registration and use. The Panel finds that passing off as Complainant while offering to sell competing products can evidence bad faith registration and use per the Policy ¶¶ 4(b)(iii) and (b)(iv). See 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 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).

 

As previously noted, Complainant has provided screenshots of both Complainant's website and the resolving webpages to which the disputed domain names direct or previously directed, which demonstrate Respondent's impersonation of Complainant and fraudulent use of the disputed domain names. The Panel finds that such passing off activities constitute a disruption of Complainant's business under the Policy ¶ 4(b)(iii). In addition, Respondent uses the disputed domain names for commercial gain by redirecting Internet users seeking Complainant to Respondent's own websites, thereby creating a likelihood of confusion with Complainant's marks. Accordingly, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under the Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant further contends that Respondent registered the disputed domain names in bad faith with knowledge of Complainant's rights in its TOMMY JOHN mark given (i) the fame of Complainant's TOMMY JOHN mark when Respondent registered the disputed domain names, (ii) the fact that Respondent used or is using the disputed domain names in an attempt to offer goods that are identical to the goods covered by Complainant's registered trademarks, and (iii) the fact that Respondent registered the disputed domain names that are identical to Complainant's TOMMY JOHN mark. Moreover, Respondent already has an adverse decision against it, having registered the domain <tommyjohnshop.com> on March 30, 2026. Forum issued a decision [case number: FA 2216551] transferring that domain to Complainant on May 19, 2026. Respondent registered and used the two new disputed domain names with knowledge of Complainant's objection to its use. One of the disputed domain names was registered after the issuance of the adverse decision.

 

The Panel notes that, due to the long commercial success of the TOMMY JOHN mark and Complainant's extensive use, promotion, and registration of the TOMMY JOHN mark over many years, the TOMMY JOHN mark has become well known. The Panel infers, due to the notoriety of Complainant's mark and Respondent's passing off activities, that Respondent had knowledge of Complainant's rights in the TOMMY JOHN mark at the time of registering the disputed domain names, and finds that Respondent registered the disputed domain names in bad faith under the 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 <tommyjohnsale.com> and <tommyjohnusmalls.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: August 12, 2026