Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2001001880644
Complainant is Tommy John, Inc. (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tommyjohnsunderwear.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2020; the Forum received payment on January 27, 2020.
On January 28, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tommyjohnsunderwear.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 January 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2020 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@tommyjohnsunderwear.com. Also on January 29, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On February 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Tommy John, Inc., is engaged in the manufacture and sale of clothing with significant brand loyalty. Complainant has rights in the TOMMY JOHN mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,338,089, registered May 21, 2013).
2. Respondent’s <tommyjohnsunderwear.com>[i] domain name is confusingly similar to Complainant’s TOMMY JOHN mark as Respondent merely incorporates the mark in its entirety while adding the letter “s,” the generic term “underwear,” and a “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <tommyjohnsunderwear.com> domain name. Respondent is not licensed or authorized to use Complainant’s TOMMY JOHN mark and is not commonly known by the domain name.
4. Additionally, Respondent fails to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a website which is being used to obtain click-through revenue by linking to Complainant’s and third-party websites, some of which compete with Complainant’s business.
5. Respondent registered and uses the <tommyjohnsunderwear.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration.
6. Additionally, Respondent uses the domain name to attract Internet users to its website and commercially benefit via third-party pay-per-click links.
7. Respondent had actual knowledge of Complainant’s rights in the TOMMY JOHN mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TOMMY JOHN mark. Respondent’s domain name is confusingly similar to Complainant’s TOMMY JOHN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tommyjohnsunderwear.com> domain name and that Respondent registered and uses the domain name 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 Jurisprudential Overview 3.0 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”).
Complainant has rights in the TOMMY JOHN mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,338,089, registered May 21, 2013). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Thus, Complainant’s registration of the TOMMY JOHN mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <tommyjohnsunderwear.com> domain name is confusingly similar to the TOMMY JOHN mark, as the name incorporates the mark in its entirety along with an added letter, generic term and a gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Ancestry.com Operations Inc. v. Nadeem Qadir a/k/a NA Seocho c/o NA a/k/a Bladimir Boyiko a/k/a Free Domains Parking c/o Andrey Vasiliev, FA 1327838 (Forum July 13, 2010) (finding the respondent’s <familytreemakers.com> domain name confusingly similar to the complainant’s FAMILY TREE MAKER trademark because the addition of the letter “s” was insufficient to distinguish the domain name from the mark); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Respondent merely adds the letter “s”, the generic term “underwear” and the “.com” gTLD to Complainant’s TOMMY JOHN mark. Therefore, the <tommyjohnsunderwear.com> domain name is confusingly similar to the TOMMY JOHN mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <tommyjohnsunderwear.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <tommyjohnsunderwear.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the TOMMY JOHN mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the <tommyjohnsunderwear.com> domain name as “Carolina Rodrigues / Fundacion Comercio Electronico,” and no information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s TOMMY JOHN mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <tommyjohnsunderwear.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <tommyjohnsunderwear.com> domain name is demonstrated by its failure to use the domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Complainant has provided evidence that Respondent uses the domain name’s resolving website to display pay-per-click hyperlinks that reference Complainant’s and third-party websites. Use of a domain name that is confusingly similar to a complainant’s mark to resolve to a pay-per-click website is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides screenshots of Respondent’s resolving website, which displays click-through links that reference Complainant and other third-party websites, some of which compete with Complainant’s business. The Panel may therefore finds Respondent does not use the <tommyjohnsunderwear.com> domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent’s registration of the <tommyjohnsunderwear.com> domain name is part of a pattern of bad faith registration and use of domain names. A respondent who has been a respondent in multiple prior UDRP proceedings in which it was ordered to transfer domain names may be found to have engaged in bad faith registration and use of domain names per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant has provided evidence that in at least five reported decisions with the Forum “Carolina Rodrigues / Fundacion Comercio” was named as the respondent, and in all of those cases, the domain names at issue in the proceedings were transferred. Thus, the Panel holds that the registration and use of the <tommyjohnsunderwear.com> domain name is part of a pattern and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Furthermore, Complainant argues Respondent uses the <tommyjohnsunderwear.com> domain name to resolve to a page of pay-per-click links. Using a confusingly similar domain name to the mark of another to offer competing hyperlinks can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). Complainant has provided evidence that the <tommyjohnsunderwear.com> domain name’s resolving website displays pay-per-click hyperlinks which redirect to Complainant’s website and third-party websites, some of which compete with Complainant. The Panel holds that Respondent has registered and uses the <tommyjohnsunderwear.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant contends that in light of the fame and notoriety of its TOMMY JOHN mark, it is inconceivable that Respondent could have registered the <tommyjohnsunderwear.com> domain name without actual knowledge of Complainant's rights in the mark. Respondent’s use of the TOMMY JOHN mark in its domain name and hyperlinks to Complainant’s website and Complainant’s competitors websites indicate it had actual knowledge of Complainant’s business and rights in the mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Because Respondent had actual knowledge of Complainant’s rights in the TOMMY JOHN mark, Respondent registered the <tommyjohnsunderwear.com> name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tommyjohnsunderwear.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 25, 2020
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