Tommy John, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1912001876247
Complainant is Tommy John, Inc. (“Complainant”), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman, New York, United States. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tommyjonm.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2019; the Forum received payment on December 20, 2019.
On December 23, 2019, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <tommyjonm.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 December 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 15, 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@tommyjonm.com. Also on December 26, 2019, 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 January 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant manufactures and sells clothing. Complainant has rights in the TOMMY JOHN trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,338,089 registered on May 21, 2013). Respondent’s <tommyjonm.com> domain name is identical or confusingly similar to Complainant’s trademark as it includes the TOMMY JOHN trademark in its entirety, replacing the “HN” with “NM” and adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <tommyjonm.com> domain name. Respondent is not commonly known by <tommyjonm.com> and is not a licensee or authorized to use Complainant’s TOMMY JOHN trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a page with hyperlinks to Complainant and its competitors.
Respondent registered and uses the <tommyjonm.com> domain name in bad faith. Respondent offers the disputed domain name for sale. Respondent creates a likelihood of confusion as to affiliation with Complainant, as the disputed domain name hosts hyperlinks to Complainant and its competitors. Further, Respondent had actual knowledge of Complainant’s rights in the TOMMY JOHN trademark prior to its registration of the disputed domain name. Finally, Respondent is engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,338,089 TOMMY JOHN (word), registered May 21, 2013 for goods in class 25;
No. 5,418,841 TOMMY JOHN (word), registered March 6, 2018 for goods in class 25; and
No. 5,477,161 TOMMY JOHN (word), registered May 22, 2018 for services in class 35.
The disputed domain name was registered on November 20, 2019.
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”).
The Complainant claims rights in the TOMMY JOHN trademark based upon registration of the trademark with the USPTO (e.g., Reg. No. 4,338,089 registered on May 21, 2013). Registration of a trademark with the USPTO is sufficient to establish rights in that trademark. 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). The Panel therefore holds that Complainant’s registration of the TOMMY JOHN trademark with the USPTO is sufficient to establish rights in the trademark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <tommyjonm.com> domain name is identical or confusingly similar to Complainant’s trademark as it includes the TOMMY JOHN trademark in its entirety, replacing the “HN” with “NM,” and adding the “.com” gTLD. Slight misspellings of a trademark with the addition of a gTLD is not sufficient to distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds 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.”). The Panel note that a) for pure technical reason, there is only two ways to create a domain name based on a two word trademark: either write the two words with a hyphen in between, or – as in this specific case – combining the two words into one word, and further that b) for the average Internet user, searching quickly for the Complainant’s trademark and related site/s, the minor difference between TOMMY JOHN and the “tommyjonm” disputed domain name is not enough avoid confusion, it is rather clear that “tommyjonm” is a misspelling of the Complainant’s trademark. The Panel therefore finds that the disputed domain name is confusingly similar to the TOMMY JOHN trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <tommyjonm.com> domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s TOMMY JOHN trademark. Where a response is absent, the WHOIS information may be used to determine whether a respondent is commonly known by the disputed 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 trademark may indicate that the respondent is not commonly known by the disputed 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 disputed domain name lists the registrant as “Domain Administrator / Fundacion Privacy Services LTD” and there is no other evidence to suggest that Respondent was authorized to use the TOMMY JOHN trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <tommyjonm.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Specifically, Respondent’s disputed domain name resolves to a page hosting hyperlinks to Complainant and its competitors. A respondent’s use of a disputed domain name to host hyperlinks to a complainant and its competitors is not a bona fide offering of goods or services or legitimate noncommercial or fair use per under Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of Respondent’s web site connected to the disputed domain name which purportedly hosts hyperlinks to Complainant and its competitors. The Panel therefore clearly finds that Respondent fails to make a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <tommyjonm.com> domain name in bad faith. Specifically, Respondent offers the disputed domain name for sale. A respondent’s offer to sell the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Complainant provides screenshots of Respondent’s disputed domain name which purportedly has a link for Internet users to “Buy this domain.” Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Next, Complainant argues that Respondent registered and uses the <tommyjonm.com> domain name in bad faith as Respondent’s disputed domain name hosts several hyperlinks that compete with Complainant or are unrelated to Complainant. A respondent’s use of a disputed domain to host hyperlinks both competing with a complainant and unrelated to a complainant is evidence of bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provides screenshots of Respondent’s disputed domain name which purportedly hosts hyperlinks unrelated to Complainant and hyperlinks that compete with the Complainant. Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s rights in the TOMMY JOHN trademark prior to its registration of the <tommyjonm.com> domain name. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). 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.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s use of the famous TOMMY JOHN mark demonstrates Respondent had knowledge of Complainant’s rights in the TOMMY JOHN trademark prior to registering the disputed domain name. Based on the obvious misspelling of the Complainant’s trademark, together with the actual use of <tommyjonm.com>, the Panel agrees with the Complainant’s conclusion, and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent registered and uses the <tommyjonm.com> domain name in bad faith as Respondent is engaged in typosquatting. Typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA1811001819070 (Forum December 27, 2018) describing typosquatting as "a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name's target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark". As already noted above, the disputed domain name includes the TOMMY JOHN trademark in its entirety, just replacing the “HN” with “NM”, still making the disputed domain name very similar to the trademark for the normal Internet user, especially as the web site connected to <tommyjonm.com> includes references with correct spelling of the TOMMY JOHN trademark. The Panel therefore agrees with the Complainant’s statement, and finds that Respondent registered and uses the disputed domain name in bad faith according to 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 <tommyjonm.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 26, 2020
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