Tommy Hilfiger Licensing LLC v Chen Chen

WIPO Case No. D2024-0572

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tommy Hilfiger Licensing LLC v. Chen Chen

Case No. D2024-0572

1. The Parties

The Complainant is Tommy Hilfiger Licensing LLC, United States of America (“United States”), represented

by Lipkus Law LLP, Canada.

The Respondent is Chen Chen, United States.

2. The Domain Name and Registrar

The disputed domain names <tommyoutlet.life> and <tommystore.life> are registered with NameSilo, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2024.

On February 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2024, 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 on February 12, 2024.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the paragraph 5, the due date for Response was March 4, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on March 5, 2024.

The Center appointed William F. Hamilton as the sole panelist in this matter on March 7, 2024. 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.

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4. Factual Background

The Complainant is the owner of the well-known TOMMY HILFIGER trademark and has been engaged in the

production, sale and licensing of men’s and women’s apparel, fragrances, accessories and footwear under

the mark since as early as 1982.

The Complainant owns numerous trademark registrations for the TOMMY HILFIGER mark in many jurisdictions, including:

- United States Patent and Trademark Office Registration No. 1,398,612, registered on June 24, 1986

- Canada Registration No. TMA446,291, registered on August 18, 1995

- United Kingdom Registration No. UK000212965D, registered on January 8, 1999

The Complainant also owns trademark registrations for the TOMMY mark, including:

- United States Registration No. 2,389,024, registered on September 26, 2000

- United Kingdom Registration No. UK00002292693, registered on July 29, 2005

- European Union Registration No. 018093680, registered on December 21, 2019

The Complainant owns domain names incorporating its marks, including <tommyhilfiger.com>, <tommy.com>, and <tommyjeans.com>, which were registered and used long before the disputed domain names were registered. The Complainant spends millions of USD worldwide annually advertising and promoting its products under the TOMMY and TOMMY HILFIGER marks.

The disputed domain names <tommyoutlet.life> and <tommystore.life> were registered by the Respondent on January 10, 2024, and January 19, 2024, respectively. The disputed domain names currently resolve to inactive websites. The disputed domain names are featured on Facebook postings that promote the sale of

apparently counterfeits of the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. The Complainant contends that the disputed domain names are confusingly similar to its TOMMY trademark because the disputed domain names incorporate the mark entirely followed

by the terms “outlet” and “store.” The Complainant contends that the Respondent has no rights or legitimate

interests in the disputed domain names, and that the Respondent registered and is using the disputed

domain names in bad faith in connection with a potential scheme to sell counterfeit products.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in TOMMY HILFIGER and TOMMY marks through its numerous trademark registrations in multiple jurisdictions. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.

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The disputed domain names incorporate the Complainant’s TOMMY trademark (and initial word of the TOMMY HILFIGER mark) in its entirety. The addition of the terms “outlet” and “store”, and the generic Top-Level Domain (“gTLD”) “.life”, does not avoid a finding of confusing similarity under the first element.

The Panel finds the TOMMY mark is recognizable within the disputed domain names. The gTLD is viewed as a standard registration requirement and is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.

Although the addition of the terms “outlet,” and “store” may bear on the assessment of the second and third

elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity
between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names, such as those enumerated in the
Policy or otherwise. WIPO Overview 3.0, section 2.1.

Moreover, while the disputed domain names do not resolve to active websites, the association of the disputed domain names with social media efforts to market and promote the sale of counterfeit products dispels any rights or legitimate interests in the disputed domain names. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a

respondent’s registration and use of a domain name is in bad faith.

The Panel finds the Respondent was likely aware of the Complainant and its trademarks when registering the disputed domain names, given the fame of the TOMMY and TOMMY HILFIGER marks and their use for over 30 years before the registration of the disputed domain names by the Respondent. Willful ignorance is not a defense to bad faith registration and use. WIPO Overview 3.0, section 3.2.3. By using the TOMMY

mark combined with the terms “outlet” and “store” in the disputed domain names, the Panel finds that the

Respondent has intentionally registered and used the disputed domain names in bad faith to create a direct or implied affiliation with the Complainant for commercial gain.

Moreover, while the disputed domain names resolve to websites that are currently inactive, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith under the doctrine of

passive holding given the distinctiveness and reputation of the Complainant’s marks, the failure of the

Respondent to submit a response or provide any evidence of actual or contemplated good faith use, the use

of a privacy service to conceal the Respondent’s identity and contact details, which also supports the

possibility that the disputed domain names could be used in connection with a counterfeit marketing scheme.

WIPO Overview 3.0, section 3.4.

The Panel finds the third element of the Policy has been established.

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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 names <tommyoutlet.life> and <tommystore.life> be transferred to the

Complainant.

/William F. Hamilton/

William F. Hamilton

Sole Panelist
Date: March 19, 2024