Tommy Bahama Group, Inc. v 杨智超 (Zhi Chao Yang)

WIPO Case No. D2023-3275

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tommy Bahama Group, Inc. v. 杨智超 (Zhi Chao Yang)

Case No. D2023-3275

1. The Parties

The Complainant is Tommy Bahama Group, Inc., United States of America (“United States”), represented by

Kilpatrick Townsend & Stockton LLP, United States.

The Respondent is 杨智超 (Zhi Chao Yang), China.

2. The Domain Name and Registrar

The disputed domain name <tommubahama.com> is registered with Chengdu West Dimension Digital

Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on
July 30, 2023. On the following day, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On August 1, 2023, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact information for the disputed
domain name that differed from the named Respondent (REDACTED FOR PRIVACY) and contact
information in the Complaint. The Center sent an email communication to the Complainant on
August 4, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in
English on August 7, 2023.

On August 4, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 7, 2023, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the

proceeding.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

page 2

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 10, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2023.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 7, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant markets island-inspired apparel and related accessories including footwear, swimwear, sunglasses, eyewear, watches, wallets, bedding, sporting goods, fragrances, personal care products, and home furnishings. It presently operates 136 Tommy Bahama retail stores throughout the United States

(including 10 outlet stores) and has, through various arrangements, 22 Tommy Bahama stores in other following:

countries. Its products are also sold through third parties. It operates 21 Tommy Bahama restaurant-retail
locations in the United States. “Tommy Bahama” is a name but does not identify a particular living individual.

• United States trademark registration number 1802812 for TOMMY BAHAMA, registered on November 2, 1993 with a claim of first use in commerce on March 1, 1993, specifying goods in class 25, including men’s, women’s, boys’, and girls’ clothing;

• Chinese trademark registration number 1219615 for TOMMY BAHAMA, registered on October 28, 1998, specifying goods in class 32, including beer; and

• Chinese trademark registration number 1733366 for TOMMY BAHAMA, registered on September 28, 2010, specifying goods in class 25, including clothing.

The above trademark registrations remain current. The Complainant has also registered the domain name
<tommybahama.com> that it uses in connection with a website that prominently displays the TOMMY

BAHAMA mark and provides information about the Complainant and its clothing for men and women.

The Respondent is an individual based in China.

The disputed domain name was registered on June 16, 2023. It resolves to a landing page displaying Pay- the “Tommy Bahama® Official Site”, Tommy Bahama clothing sites, and sites for other brands of clothing.

Per-Click (“PPC”) links for Tommy Bahama Shirts, Tommy Bahama Shorts, and Tommy Bahama T Shirts.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s TOMMY BAHAMA mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The
Respondent cannot use the disputed domain name with any bona fide offering and cannot be commonly
known as “TommuBahama,” given that the Complainant has extensive and exclusive rights in the TOMMY
BAHAMA mark and has not authorized the Respondent to use that mark.

page 3

The disputed domain name was registered and is being used in bad faith. The Complainant’s TOMMY BAHAMA mark is well known. The Respondent acted in bad faith by leveraging the notoriety of that mark intentionally to redirect Internet users to click-through revenue websites from which the Respondent is seeking to profit. The Respondent is diverting web traffic that otherwise would be looking for the Complainant’s products and services under the Complainant’s mark. The disputed domain name is an example of typosquatting.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is registered in Latin characters, not Chinese script; there is no indication that the Respondent is necessarily more fluent in Chinese than English; and the Complainant is unable to communicate in Chinese without a great deal of additional expense and delay due to the need for translation.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; and Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. Despite the Center having sent the written notice of the Complaint and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not commented on the issue of language nor expressed any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint would create an undue burden and delay, whereas accepting it as filed without translation will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove the following elements:

(i)      the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii)     the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)    the disputed domain name has been registered and is being used in bad faith.

page 4

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the TOMMY BAHAMA mark.

The disputed domain name incorporates the TOMMY BAHAMA mark, except that it substitutes a “u” for the “y”. Despite this obvious misspelling, the disputed domain name contains sufficiently recognizable aspects of the mark for it to be confusingly similar to the mark. See WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.

The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) extension (“.com”). As a standard requirement of domain name registration, a gTLD extension may be disregarded in the comparison between the disputed domain name and the Complainant’s mark. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the

Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i)        before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii)

[the respondent] (as an individual, business, or other organization) [has] been commonly known by the or

(iii)      [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first and third circumstances set out above, the disputed domain name resolves to a landing page displaying PPC links related to the Complainant’s clothing. Despite a linked page purporting to offer access to the Complainant’s official website and other sites selling the Complainant’s clothing, certain of the linked websites offer clothing that competes with the Complainant’s products. The Complainant submits that it has not authorized the Respondent to use its TOMMY BAHAMA mark. In the Panel’s view, these circumstances indicate that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is he making a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance set out above, the Respondent is identified in the Registrar’s WhoIs
database as “杨智超 (Zhi Chao Yang)”, not the disputed domain name. There is no evidence that the
Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

page 5

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

(iv)      by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for

commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.

The disputed domain name was registered in 2023, years after the registration of the Complainant’s TOMMY BAHAMA trademark, including in China, where the Respondent is based. The disputed domain name is an obvious misspelling of the TOMMY BAHAMA mark. The mark is a distinctive name, not a dictionary word or common phrase. The disputed domain name has no apparent meaning other than as an approximation of that mark and the Complainant’s own domain name. The disputed domain name resolves to a landing page that links to another page that repeatedly displays the TOMMY BAHAMA correctly spelt, including in the phrase “Tommy Bahama® Official Site”. This all gives the Panel reason to find that the Respondent had the TOMMY BAHAMA mark in mind when he registered the disputed domain name and that he intentionally misspelt the mark in the disputed domain name.

The disputed domain name is used to attract Internet users who misspell the Complainant’s domain name in an Internet browser by creating a likelihood of confusion with the Complainant’s TOMMY BAHAMA trademark as to the source, sponsorship, affiliation, or endorsement of the landing page to which the disputed domain name resolves. The PPC links displayed on the landing page capitalize on the trademark value of TOMMY BAHAMA, as confirmed by the linked page which repeatedly displays the trademark correctly spelt, including in the phrase “Tommy Bahama® Official Site”. The linked websites in some cases offer clothing that competes with the Complainant’s products. This use is intentional and for the commercial gain of the Respondent, or the operators of the linked websites, or both. In each of these scenarios, the facts fall within the circumstance described in paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tommubahama.com> be transferred to the Complainant.

/Matthew Kennedy/
Matthew Kennedy
Sole Panelist
Date: September 14, 2023