Tommy Hilfiger Licensing LLC v Nawaf Hariri, Salla Application Company

WIPO Case No. D2025-2694

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tommy Hilfiger Licensing LLC v. Nawaf Hariri, Salla Application Company

Case No. D2025-2694

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 Nawaf Hariri, Salla Application Company, Saudi Arabia.

2. The Domain Names and Registrar

The disputed domain names <tommy-ksa.com>, <tommy-sa.com>, and <tommy-st0re.com> are registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2025. On July 9, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 10, 2025, the Registrar transmitted by email to the Center its verif ication response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verif ied that the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on July 21, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2025. The Respondent did not submit any response before the due date. Accordingly, the Center notified the Respondent’s default on August 15, 2025. The Respondent sent an email communication to the Center on August 19, 2025.

The Center appointed Mihaela Maravela as the sole panelist in this matter on August 20, 2025. The Panel f inds 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

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4. Factual Background

According to information in the Complaint, the Complainant was founded in 1985, and is a leading global corporation that designs, sources, distributes, sells and markets fashion apparel, accessories and other products throughout the world, all of which prominently display its registered trademarks, such as TOMMY, TOMMY HILFIGER, and other various marks and logos.

The Complainant is the holder of a number of trademarks for TOMMY or TOMMY HILFIGER, including the United States trademark TOMMY No. 2,389,024, registered on September 26, 2000, duly renewed, and designating goods in international class 25; the United States trademark TOMMY HILFIGER No. 1,398,612, registered on June 24, 1986, duly renewed and designating goods in international class 25; the European Union trademark TOMMY No. 018093680 registered on December 21, 2019, duly renewed and designating services in classes 3, 9, 14, 18, 24, 25, and 35 of goods and services.

The Complainant’s products are sold through the Complainant’s own retail stores, outlet stores and websites and, through its authorized dealers.

The Complainant owns a number of domain name registrations that include TOMMY, such as <tommyhilf iger.com> since December 14, 1998, <tommy.com> since December 1, 1998, or <tommyjeans.com> since June 27, 1996.

The disputed domain name <tommy-ksa.com> was registered on April 10, 2025, the disputed domain name <tommy-sa.com> was registered on October 3, 2024, and the disputed domain name <tommy-st0re.com> was registered on September 10, 2024. The disputed domain names are inactive.

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.

Notably, the Complainant contends that the disputed domain names are confusingly similar to its trademarks. In this respect, the Complainant argues that the disputed domain names <tommy-ksa.com> and <tommy-sa.com>, are comprised of the Complainant’s TOMMY trademark in its entirety with the addition of the geographical indicators “KSA” (abbreviation for the Kingdom of Saudi Arabia) and “SA” (country code for Saudi Arabia), respectively. As regards the disputed domain name <tommy-st0re.com> it includes “st0re”, a misspelled variation of “store”, where the letter “O” is replaced with the number “0” in the domain name, which intensifies the confusion a consumer would experience because the Complainant operates stores globally where consumers can purchase the Complainant’s products.

As regards the second element, the Complainant argues that the disputed domain names are inactive and resolve to pages that state “this site can’t be reached.” According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant has not authorized or licensed the Respondent or anyone else to use or register the disputed domain names.

With respect to the third element, the Complainant submits it has used the TOMMY and TOMMY HILFIGER marks continuously since at least as early as 1982 in connection with the advertising, of fering for sale, and sale of its various products in the United States and elsewhere and that such use has resulted in millions of customers worldwide and billions of dollars in sales. Over these years, the Complainant has expended millions of dollars in advertising and promoting its products under its TOMMY HILFIGER and TOMMY trademarks in a variety of media throughout the world, including print, television, and radio advertisements. Therefore, there is no plausible actual or contemplated active use of the disputed domain names that would not be illegitimate and constitute an infringement of the Complainant’s rights. Furthermore, the Complainant argues that the Respondent has a history of registering domain names that comprise of the trademarks of

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third parties and has been involved in UDRP proceedings in the past with regards to famous marks where it has been ordered to transfer the domain names in dispute to the concerned trademark owners. Moreover, the Respondent is an e-commerce platform that is designed to help businesses establish and manage their online stores, providing for a range of tools and services, including website building, app creation, payment processing, shipping integration, and marketing solutions, amongst other services, allowing merchants to more easily sell their products and services. Therefore, the Respondent knew, or should have known of the Complainant’s TOMMY mark when registering the disputed domain names.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. In an informal email communication to the Center af ter the due date for the Response, a person alleging to represent the Respondent indicated that it is “an e-commerce platform that enables merchants to create and manage their online stores, similar to platforms such as Shopify. As part of our services, merchants have the option to register domain names through our registrar accounts during their store setup process. Accordingly, the above-listed domain names were not registered directly by Salla, but rather by one of the merchants as part of their store registration on our platform. We have no direct involvement in the registration or use of these domains”, essentially disclaiming liability for the registration of the disputed domain names.

6. Discussion and Findings
6.1. Late Response

Paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the complaint. On the other hand, paragraph 10(b) of the Rules requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case.

The Response was filed a few days late. Based on the overall circumstances of the case, and also taking into account the fact that the Response was filed before the appointment of the Panel, and that the delay has not delayed the resolution of this proceeding – and also bearing in mind the Panel’s obligations under paragraph 10(b) of the Rules – the Panel accepts the late f iling of the Response.

6.2. Substantive Matters

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names, and (iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0“), section 1.7.

The Complainant has shown rights in respect of the trademark TOMMY for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel f inds the mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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Although the addition of other terms (here, “ksa”, “sa”, and “st0re”, a misspelled version of “store”) and a hyphen may bear on assessment of the second and third elements, the Panel f inds 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 1.8.

The Panel agrees that the Top-Level Domain (“TLD”) “.com” is disregarded in the confusing similarity test, as it does not form part of the comparison as it is a standard registration requirement for technical reasons. WIPO Overview 3.0, section 1.11.1.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

There is no evidence that the Respondent is using the disputed domain names in connection with a bona f ide of fering of goods or services, nor does the Respondent appear to engage in any legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraphs 4(c)(i) and (iii) of the Policy. Rather, according to the unrebutted evidence with the Complaint, the disputed domain names are inactive.

Also, there is no evidence that the Respondent (or the alleged third party user of the Respondent’s services) is commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, given also that TOMMY is the distinctive part of the disputed domain names, while “ksa”, “sa” presumably stand for Kingdom of Saudi Arabia, respectively Saudi Arabia and the misspelled version of “store” is descriptive of the services of fered by the Complainant.

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. Although the Respondent claims that the disputed domain names were not registered directly by it, claiming it has no direct involvement in the registration or use of the disputed domain names, the Respondent did not provide any evidence of the terms applied by its platform, and no other evidence aiming at proving rights or legitimate interests, therefore the prima facie case made by the Complainant has not been rebutted. Also, the Complainant argues there is a pattern of abusive registration, and the Respondent did not address this allegation in its Response.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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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. WIPO Overview 3.0, section 3.2.1.

The Panel f inds it unlikely that the disputed domain names were registered without knowledge of the Complainant and its TOMMY trademark, given the reputation of the Complainant, long use of its trademarks and the composition of the disputed domain names, which reproduce the TOMMY trademark with the mere addition of a misspelled version of the generic term “store”, or respectively of the suffixes “ksa” or “sa”, which presumably stand for Kingdom of Saudi Arabia and Saudi Arabia >, combined with the gTLD “.com”. The Respondent has sought to create a misleading impression of association with the Complainant, a well-known company, when registering the disputed domain names.

Panels have found that the non-use of a domain name would not prevent a f inding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a f inding of bad faith under the Policy.

Further, the Complainant has submitted evidence that the Respondent has been the subject of a number of f inding of bad faith under paragraph 4(b)(ii) of the Policy.

previous UDRP decisions involving similar conduct (e.g., LEGO Holding A/S v. Nawaf Hariri, Salla
Application Company, WIPO Case No. D2025-0313). Also, according to the unrebutted statements of the
Complainant, the Respondent has registered domain names incorporating other famous marks (e.g.,

The Panel f inds that the Complainant has established the third element 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 names <tommy-ksa.com>, <tommy-sa.com>, and <tommy-st0re.com> be transferred to the Complainant.

/Mihaela Maravela/
Mihaela Maravela
Sole Panelist
Date: September 3, 2025