Decision for dispute CAC-UDRP-104505

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant owns rights in the word marks ‘TOMMY HILFIGER,’ ‘TOMMY,’ ‘HILFIGER,’ and ‘TOMMY JEANS’; and figurative marks associated with the word ‘TOMMY HILFIGER’ in several countries and regions, inter alia:

The word mark ‘TOMMY HILFIGER’
-Benelux Reg. No. 587912 registered on December 1, 1996
-EUIPO Reg. No. 131706 registered on October 16, 1998
-International Reg. No. 1270616 registered on July 29, 2015

The word mark ‘TOMMY’
-Benelux Reg. No. 1397747 registered on September 17, 2019
-EUIPO Reg. No. 18093680 registered on December 21, 2019

The word mark for ‘HILFIGER’
-EUIPO Reg. No. 10451383 registered on May 2, 2012
-International Reg. No. 1170031 registered on November 7, 2012

The word mark ‘TOMMY JEANS’
-Benelux Reg. No. 808824 registered on February 1, 1995
-EUIPO Reg. No. 1233923 registered on October 31, 2005
-International Reg. No. 1393619 registered on August 28, 2017.

The figurative mark ‘TOMMY HILFIGER & Flag’
-Benelux Reg. No. 950232 registered on March 31, 2014
-EUIPO Reg. No. 1225683 registered on May 16, 2014
-International Reg. No. 1225683 registered on May 16, 2014.

The figurative mark ‘Tommy Hilfiger flag logo’
-EUIPO Reg. No. 131631 registered on October 16, 1998

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant, Tommy Hilfiger Licensing B.V., designs, sources, distributes, sells and markets fashion apparel, accessories and other products throughout the world under the trademarks TOMMY HILFIGER, HILFIGER, TOMMY JEANS, TOMMY and its visual mark consisting of a tricolor flag. In 2019, the Complainant’s global revenue was approximately US $9.2 billion, of which 11% is attributable to the Asia Pacific region and 44% is attributable to Europe. Its products are distributed and sold to consumers through department stores, retail stores and authorized e-commerce sites throughout the world, including the official e-commerce website launched in 2004 and located at the <tommy.com> domain name. The Complainant (including the entity’s legal predecessors) has used the Tommy Hilfiger trademarks for several decades.

The earliest registration date of the disputed domains is November 24, 2021. All of the disputed domains were registered between November 24, 2021 and April 11, 2022. 43 disputed domain names <tommyhilfigerphilippines.com, tommyhilfigerauckland.com, tommyhilfigerbudapest.com, tommyhilfigergreeceshop.com, tommyhilfigersalecanada.com, tommyhilfigerukstores.com, tommyhilfigerirelandsale.com, tommyhilfigeralesuomi.com, tommyhilfigermont.com, tommyjeansjapan.com, tommyhilfigertorino.com, tommyhilfigersaleie.com, tommyoutletcanada.com, tommyhilfigersingaporeoutlet.com, hilfigersverige.com, tommygreece.com, tommyirelandsale.com, tommyhilfigercaoutlet.com, tommyhilfigermyoutlet.com, tommyhilfigerphoutlet.com, tommyhilfigerza.com, tommyusasale.com, tommyhilfigerkorting.com, tommyhilfigerpt.com, tommyhilfigertroutlet.com, tommyhilfigeruitverkoop.com, tommyhilfigersklep.com, tommyhilfigerar.com, tommyhilfigerchileoutlet.com, tommyhilfigercooutlet.com, tommyhilfigerfi.com, tommyhilfigergr.com, tommyhilfigerbr.com, tommyhilfigeroutletjp.com, tommyhilfigersrbija.com, hilfiger-philippines.com, hilfigersuomi.com, tommyhilfigerarg.com, tommyhilfigerzagreb.com, tommyhilfigerdurban.com, tommyhilfigerkl.com, and hilfigersouthafricass.com> resolve to websites that mimic the Complainant’s official website at <tommy.com> and pass off the Respondent as the Complainant by featuring the Complainant’s trademarks, the exact same ‘favicon’ (favicon.ico image), consisting of the Complainant’s registered trademark for the Tommy Hilfiger flag TOMMY HILFIGER & Flag visual mark at the top of every one of its active websites and placing a false and misleading copyright notice in its footer; and claiming it owns copyrights in the content / products offered on the websites.

17 other disputed domain names <tommyhilfigersoldes.com, tommyhilfiger-japan.com, tommyhilfigeronlinesatis.com, tommyhilfigerph.com, tommyhilfigercanadaonline.com, tommyhilfigersingaporesgsg.com, tommyhilfigertracksuitsale.com, tommyhilfigerwebshop.com, hilfigeroutletusa.com, tommyhilfigeronline.com, tommyhilfigerpolskasklep.com, tommyhilfigeronlinestore.com, tommyhilfigeraus.com, tommyhilfigernzoutlet.com, tommyhilfigersaleuk.com, tommyhilfigersgoutlet.com, tommyhilfiger-budapest.com, and hilfigersouthafricas.com> have not resolved to an active website.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

PARTIES' CONTENTIONS:

COMPLAINANT:
i) The Complainant owns rights in the word marks ‘TOMMY HILFIGER,’ ‘TOMMY,’ ‘HILFIGER,’ ‘TOMMY JEANS,’ and the figurative mark ‘TOMMY HILFIGER & flag.’ All of the disputed domain names are confusingly similar to the Complainant’s marks because the disputed domain names contain one of the Complainant’s trademarks followed by one or more descriptive terms or acronyms or are comprised of a combination of a geographical term and/or a descriptive term.

ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. Most of the disputed domain names resolve to websites that mimic the Complainant’s official website at <tommy.com> and pass off the Respondent as the Complainant by featuring the Complainant’s trademarks, the exact same ‘favicon’ (favicon.ico image), consisting of the Complainant’s registered trademark for the Tommy Hilfiger flag TOMMY HILFIGER & Flag visual mark at the top of every one of its active websites and placing a false and misleading copyright notice in its footer; and claiming it owns copyrights in the content / products offered on the websites. Some other disputed domain names have not resolved to an active website. Use of the Complainant’s marks to imitate the Complainant’s genuine website or passive holding of the disputed domain names cannot constitute a bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain names. The Respondent is not making a legitimate, non-commercial or fair use of the disputed domain names.

iii) The Respondent has registered and is using the disputed domain names in bad faith. The earliest registration date of the disputed domains by the Respondent is November 24, 2021, which is several decades after the Complainant commenced its use of the trademarks. The Respondent has registered the domain names in order to prevent the Complainant from reflecting the Complainant’s marks in the disputed domain names, and engaged in a pattern of such conduct. The Respondent had actual knowledge of the Complainant’s rights in the trademarks prior to the registration of the disputed domain names. The impersonation and passing off as being an outlet of the Complainant is misleading and confuses consumers, and amounts to bad faith. It is relevant that the Respondent uses a privacy protection service on every single domain name to hide its true identity. As for the websites that do not currently resolve to an active website, non-use of the disputed domain names does not prevent a finding of bad faith under the doctrine of passive holding.

RESPONDENT:
Respondent did not submit a response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 15(a) of the Rules for the UDRP ('the Policy') 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 the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (FORUM July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Rights

The Complainant claims rights in the word marks ‘TOMMY HILFIGER,’ ‘TOMMY,’ ‘HILFIGER,’ ‘TOMMY JEANS,’ and the figurative mark ‘TOMMY HILFIGER & flag’ as identified in Section ‘Identification of Rights’ above. The Complainant has provided the Panel with the evidence of such trademark registrations. The Panel notes that a national or an international trademark registration is sufficient to establish rights in that mark. As such, the Panel finds that the Complainant has established its rights in the word marks ‘TOMMY HILFIGER,’ ‘TOMMY,’ ‘HILFIGER,’ ‘TOMMY JEANS,’ and the figurative mark ‘TOMMY HILFIGER & flag’.

The Complainant contends that all of the disputed domain names are confusingly similar to the Complainant’s marks because the disputed domain names contain one of the Complainant’s trademarks followed by one or more descriptive terms or acronyms or are comprised of a combination of a geographical term and a descriptive term. The Panel has specifically analyzed that all of the disputed domain names are comprised of one of the Complainant’s trademarks ‘TOMMY HILFIGER,’ ‘TOMMY,’ ‘HILFIGER,’ and ‘TOMMY JEANS’; a country name <i.e., Philippines, Greece, Canada, Ireland, Japan, Singapore, Sverige (Sweden in Swedish), Polska (Poland in Polish), Srbija (Serbia), Suomi (Finland in Finish), South Africa)>; an acronym for a country or a country code <i.e., UK, USA, AUS (for Australia), CA (for Canada), MY (for Malaysia), NZ (for New Zealand), PH (for Philippines), AG or ARG (for Argentina), ZA (for South Africa), PT (for Portugal), TR(for Turkey), CO (for Colombia), FI (for Finland), GR (for Greece), BR (for Brazil), JP (for Japan), KI (for Kiribati)>; a city name (i.e., Auckland, Budapest, Torino, Zagreb, Durban); and/or descriptive terms such as shop, sale, stores, sale, ale (sale in Finish), mont (mountain in French), soldes (‘sales’ in French), online, satis (‘pretty’ in Latin), track suit sale, web shop, saleie (‘sales’ in Samoan), outlet, sklep (‘shop’ in Polish), online store, karting (‘discount’ in Dutch), uitverkoop (‘sold out’ in Afrikaans>, etc.

The Panel observes that the addition of '.com' gTLD and a descriptive or geographical term is generally disregarded in the assessment under paragraph 4(a)(i) of the Policy when comparing a disputed domain name and a trademark. Therefore, the Panel finds that all of the disputed domain names are confusingly similar to the Complainant's trademarks ‘TOMMY HILFIGER,’ ‘TOMMY,’ ‘HILFIGER,’ and ‘TOMMY JEANS.’

No rights or legitimate interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP). See also Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (FORUM November 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy paragraph 4(a)(ii).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. As a result of the Panel’s checking each of the disputed domain names’ resolving websites, the Panel notes that 43 disputed domain names as identified in Section 'Factual Background' above resolve to websites that mimic the Complainant’s official website at <tommy.com> and pass off the Respondent as the Complainant by featuring the Complainant’s trademarks, the exact same ‘favicon’ (favicon.ico image), consisting of the Complainant’s registered trademark for the Tommy Hilfiger flag TOMMY HILFIGER & Flag visual mark at the top of every one of its active websites and placing a false and misleading copyright notice in its footer; and claiming it owns copyrights in the content / products offered on the websites. The Panel further notes that 17 other disputed domain names have not resolved to an active website.

The Panel finds that the use of the Complainant’s marks to imitate the Complainant’s genuine website or passive holding of the disputed domain names does not constitute a bona fide offering of goods or services. The Respondent has not been commonly known by the disputed domain names. The Respondent is not making a legitimate, non-commercial or fair use of the disputed domain names. The Panel finds that the Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against the Respondent. As the Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel concludes that the Respondent has no rights or legitimate interests in any of the disputed domain names.

Bad faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant asserts that the Respondent has registered the domain names in order to prevent the Complainant from reflecting the Complainant’s marks in the disputed domain names, and engaged in a pattern of such conduct.

The Panel notes that the Respondent registered 60 confusingly similar domain names to the Complainant’s marks between November 24, 2021 and April 11, 2022. The Panel observes that registering multiple domain names that incorporate a complainant’s trademark may constitute a pattern of bad faith conduct. See Alexa Internet/Amazon Technologies, Inc./eBayInc./Elance, Inc./PayPal, Inc. v. duan xiangwang, CAC 100614 (August 1, 2013)(finding “respondent’s registration and use of multiple domain names for each respective trademark that violates Complainants’ rights in their respective marks constitutes a pattern of bad faith registration.”); see also Salvatore Ferragamo S.p.A v. Ying Chou, WIPO D2013-2034 (January 18, 2014)(finding “the fact of registering four domain names that incorporate the complainant’s trademark represents, in the panel’s assessment, a pattern of conduct directed against the complainant, stopping it from reflecting its trademark in the disputed domain names. The Panel concludes that paragraph 4(b)(ii) of the Policy is made out.”). The Panel finds that the fact of registering 60 domain names that incorporate the Complainant’s trademarks represents a pattern of bad faith conduct directed against the Complainant, preventing it from reflecting its trademark in the disputed domain names per paragraph 4(b)(ii) of the Policy.

The Complainant further contends that the Respondent had actual knowledge of the Complainant’s rights in the trademarks prior to the registration of the disputed domain names. The Panel observes that while constructive knowledge is insufficient for a finding of bad faith, per Policy paragraph 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use that a respondent makes of the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy paragraph 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 AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy paragraph 4(a)(iii).”).
The Panel agrees and infers, due to the notoriety of the Complainant’s marks and the manner of use of the disputed domain names that the Respondent had actual knowledge of the Complainant’s rights in the Complainant’s marks at the time of registering the disputed domain names, and thus the Panel finds the bad faith registration of the disputed domain names.

Next, the Complainant contends that the impersonation and passing off as being an outlet of the Complainant is misleading and confuses consumers, and amounts to bad faith. The Panel observes that the Respondent passes itself off as the Complainant. The Panel’s search has revealed that 43 disputed domain names resolve to websites that mimic the Complainant’s official website at <tommy.com> and pass off the Respondent as the Complainant by featuring the Complainant’s trademarks, the exact same ‘favicon’ (favicon.ico image), consisting of the Complainant’s registered trademark for the Tommy Hilfiger flag TOMMY HILFIGER & Flag visual mark at the top of every one of its active websites and placing a false and misleading copyright notice in its footer; and claiming it owns copyrights in the content / products offered on the websites. The Panel finds that the Respondent passes itself off as the Complainant at these 43 disputed domain names’ resolving websites. Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy paragraph 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy paragraphs 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy paragraph 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy paragraph 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Therefore, the Panel concludes that the Respondent registered and used the disputed domain names in bad faith per paragraph 4(b)(iii) or (iv) of the Policy.

Lastly, the Complainant contends that non-use of the disputed domain names does not prevent a finding of bad faith under the doctrine of passive holding. The Panel’s checking of the disputed domain names’ resolving websites has revealed that the 17 disputed domain names as identified in Section ‘Factual Background’ above have not resolved to an active website. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.). Taking into account the notoriety of the Complainant’s marks and the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names, coupled with the fact that the Respondent passes itself off as the Complainant at other 43 disputed domain names’ resolving websites, the Panel concludes that the Respondent’s passive holding of the 17 disputed domain names constitutes bad faith registration and use per paragraph 4(b) (iii) and (iv) under the Policy.