DECISION

 

Tommy John, Inc. v. Christina Smiley

Claim Number: FA2401002080682

PARTIES

Complainant is Tommy John, Inc. ("Complainant"), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman PLLC, New York, USA. Respondent is Christina Smiley ("Respondent"), Minnesota, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tommyjohns.shop>, registered with Web Commerce Communications Limited dba WebNic.cc.

 

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 24, 2024; Forum received payment on January 24, 2024.

 

On January 25, 2024, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <tommyjohns.shop> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2024 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@tommyjohns.shop. Also on January 26, 2024, 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 February 16, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 claims rights in the TOMMY JOHN trademark established by its ownership of the portfolio of registrations described below.

 

Complainant adds that it has an established reputation and goodwill in the mark through use in its clothing business for over 15 years, and in annexes to the Complaint has adduced evidence of use in the form of copy advertisements, screen captures from its social media pages and a selection of published articles in trade press.

 

It is further submitted that due to its substantial investment of time, effort and money in the brand, Complainant has built substantial goodwill in its TOMMY JOHN mark which has become well known, and consumers in the United States and around the world have come to associate it with Complainant, and to recognize it as a premium manufacturer of clothing with significant brand loyalty creating common law rights.

 

Complainant alleges that the disputed domain name is confusingly similar and identical in nature to Complainant's TOMMY JOHN mark and argues that due to the identical nature of the disputed domain name, it is likely to cause confusion, mistake or to deceive as to affiliation, connection or association with Complainant.

 

Complainant adds that the inclusion of the generic Top-Level Domain ("gTLD") extension <.shop> is insufficient to differentiate the disputed domain name from Complainant's mark. See United Services Auto. Ass'n v. Michele Dinoia a/k/a SZK.com, Forum Claim FA 497783 (Forum July 22, 2005) ("Respondent incorporates Complainant's entire USAA mark with the addition of "insurance," a generic term describing the business in which Complainant engages, and the generic top level domain '.com.' Such minor changes fail to significantly distinguish Respondent's domain name from Complainant's USAA mark pursuant to Policy ¶ 4(a)(i)").

 

It is next alleged that Respondent has no rights or legitimate interests in the disputed domain name. Complainant avers that Respondent is not a licensee of Complainant; that Complainant's prior rights long precede the registration of the disputed domain name; and that on information and belief, the Respondent is not commonly known by the disputed domain name.

 

Complainant also alleges that Respondent is using the disputed domain name in a manner designed to confuse unsuspecting Internet users. See Am. Int'l Group, Inc. v. Busby, Forum Claim FA 156251 (Forum May 30, 2003) ("In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant's mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name.").

 

Referring to screen captures of Complainant's own website at <tommyjohn.com> and the website to which the disputed domain name resolves, which are exhibited in an annex to the Complaint, Complainant next alleges that the disputed domain name was registered and is being used in bad faith, because

(i)                      Complainant's TOMMY JOHN mark had an established reputation when Respondent registered the disputed domain name; 

(ii)                      that the exhibited screen captures show that Respondent is using the disputed domain name in an attempt to sell goods that are identical to the goods covered by Complaint's registered trademarks, and

(iii)                      Respondent registered the disputed domain name that is identical to Complainant's TOMMY JOHN mark.

 

Complainant argues that it is therefore clear that Respondent had actual knowledge of Complainant and its trademarks at the time she registered the disputed domain name. See Florists' Transworld Delivery v. Malek, Forum Claim FA 676433 (Forum June 6, 2006) (the respondent's use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not create any legitimate interest in the domain name).

 

Complainant adds that moreover, and quite egregiously, Respondent being clearly aware of Complainant and its TOMMY JOHN brand, nonetheless adopted the disputed domain name identical to Complainant's mark, and stole imagery from Complainant's website, in an effort to divert business from Complainant and confuse the public.

 

Complainant concludes that for all of the foregoing reasons, Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, Forum Claim 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).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant carries on business manufacturing and selling of clothing under the trademark TOMMY JOHN, and has provided evidence that it owns the following portfolio of United States of America registrations:

·       United States registered service mark TOMMY JOHN registration number 5,477,161, registered on the Principal Register on May 22, 2018 for services in international class 35;

·       United States registered trademark TOMMY JOHN (stylized font), registration number 5,418,841, registered on the Principal Register on March 6, 2018 for goods in international class 25;

·       United States registered trademark TOMMY JOHN TJ, registration number 6,997,896, registered on March 7, 2023 for goods in international class 25.

 

Complainant has an established Internet presence and maintains a website marketing its products at <tommyjohn.com>.

 

The disputed domain name <tommyjohns.shop> was registered on December 28, 2023, and resolves to a website which purports to offer TOMMY JOHN branded garments at a substantial discount.

 

There is no information available about Respondent, except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name for the purposes of this proceeding. The Registrar has verified that Respondent is the registrant of the disputed domain name.

 

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 3.0 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").

 

Identical and/or Confusingly Similar

Complainant has provided uncontested evidence that it has rights in the TOMMY JOHN mark, established by its ownership of its portfolio of United States registered trademarks and service marks described above and long and use of the mark in business as a manufacturer and merchant of clothing.

 

Complainant also claims rights in an earlier United States trademark registration, but the certificate of registration adduced in evidence bears the name of a different albeit similarly named entity. This Panel accepts the evidence that the abovementioned registrations reflect the current status of Complainant's rights, and it is not necessary to enquire further in relation to the earlier registration for the purposes of this decision.

 

The disputed domain name <tommyjohns.shop> consists of Complainant's TOMMY JOHN mark in its entirety, with the addition of the letter "s" and the generic Top Level Domain ("gTLD") extension <.shop>.

 

Complainant's TOMMY JOHN mark is the dominant and only distinctive element in the disputed domain name. Neither the added letter "s" nor the gTLD extension <.shop> add any distinguishing character to the disputed domain name.

 

The letter "s" positioned as it is at the end of the TOMMY JOHN mark infers the genitive case and is likely to be ignored by Internet users.

 

Similarity the gTLD would be considered by Internet users as a necessary technical requirement for an Internet domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant's TOMMY JOHN mark.

 

This Panel finds therefore that the disputed domain name is confusingly similar to the TOMMY JOHN mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its Complaint, Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain names as set out in Complainant's submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has adduced uncontested evidence of its registered trademark rights in the TOMMY JOHN mark going back to at least March 6, 2018, when its abovementioned United States registered service mark TOMMY JOHN registration number 5,477,161, was registered on the Principal Register.

 

The disputed domain name was registered on December 28, 2023, subsequent to the date when Complainant had established rights in the TOMMY JOHN mark.

 

TOMMY JOHN is a distinctive combination of names, and it is clear that Complainant was openly marketing its products, including online on its website at <tommyjohn.com> on the date that the disputed domain name was registered.

 

This Panel finds therefore that on the balance of probabilities the registrant was aware of Complainant, its name and mark when the disputed domain name was chosen and registered.

 

Consequently, this Panel further finds that the disputed domain name was registered in bad faith with the intention of taking predatory advantage of Complainant's goodwill and reputation in the TOMMY JOHN mark.

 

The exhibited screen capture of the website to which the disputed domain name resolves shows that Respondent is purporting to offer Complainant's goods at a discount from the standard retail price. While the discount is significant it is not entirely unrealistic, and therefore this Panel takes no inference that the goods are not Complainant's goods being resold.

 

It is unfortunate that Complainant has only exhibited a part of Respondents' website. Without seeing the entire website, there is no way of knowing whether Respondent has published a disclaimer or statement which would inform the Internet visitor that there is no connection between Respondent's website and Complainant. It is not possible to find therefore with any certainty that Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its website.

 

Additionally, the images of Complainant's website which are exhibited are not replicated on Respondent's website, and it is therefore not possible to find that Respondent has taken images from Complainant's website, as alleged.

 

Nonetheless, Complainant has made uncontested averments that it has not granted Respondent any license or permission to use the TOMMY JOHN mark in the disputed domain name, and the evidence shows that Respondent is using the disputed domain name as the address of her website. Respondent's intention is clearly to make unauthorized use of Complainant's TOMMY JOHN mark in the disputed domain name to attract Internet users by taking advantage of Complainant's goodwill and reputation. Such use of the disputed domain name within Respondent's website address is intended to intercept and divert Internet traffic seeking Complainant's website. Such use of the disputed domain name constitutes use in bad faith for the purposes of the Policy.

 

As this Panel has found that the disputed domain names was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in 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 <tommyjohns.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

__________________________________________________________________

 

 

James Bridgeman SC, Panelist

Dated: February 17, 2024