Decision for dispute CAC-UDRP-108357

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

The Complainant is the owner of several trademarks:

• USPTO Trademark n. 78231460 - TOMTOM - Nice Cl. 9, 38, 39, 42 as of April 14, 2009;
• International Trademark ext. in FI n. 905070 – TOMTOM – Nice Cl. 9, 38, 39, 41, 42, 45 as of May 4, 2006;
• USPTO Trademark n. 79031570 - TOMTOM - Nice Cl. 45, 41, 39, 38, 9, 42 as of April 8, 2008;
  International Trademark ext. in FI n. 801582– TOMTOM – Nice Cl. 9, 42 as of March 31, 2006;
• EUTM n. 018762544 – TOMTOM – Nice Cl. 9, 35, 38, 39, 42 as of February 7, 2023;
• EUTM n. 009060765 – TOMTOM – Nice Cl. 16, 20, 25, 28 as of January 11, 2011;
• EUTM n. 007072689 – TOMTOM – Nice Cl. 9, 35, 38, 39, 42 as of March 9, 2010.

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

THE COMPLAINANT

The Complainant is a Dutch multinational developer and creator of location technology and consumer electronics, founded in 1991 and headquartered in Amsterdam, with main offices in Berlin, Madrid, Łódź, Pune, Eindhoven, Belgrade

The first generation of Complainant’s satellite navigation devices was released to market in 2004. On 27 May 2005, the Complainant listed on the Amsterdam Stock Exchange, valuing the company at nearly €50 million. In 2014, TomTom partnered with Volkswagen Group for joint research on Highly Automated Driving (HAD) systems. Nowadays the key customers include Stellantis, Volkswagen Group, Microsoft, BMW and Uber.

Between 2015 and 2018, TomTom focused heavily on software‐driven innovation and expanding into advanced automotive and mobility use cases. From 2019 to 2021, TomTom responded to the rise of software‐defined vehicles by launching its first autonomous driving test vehicle and partnering with companies like Uber on map‐editing integrations.

In 2022, TomTom introduced Orbis Maps, an open and flexible mapping platform that aggregates map data from contributors around the world, setting new standards in collaborative map making. In 2023, TomTom brought generative AI into the vehicle, integrating large language models to enhance navigation and driver interaction. By 2024, Orbis Maps and TomTom’s traffic data became key components in smart‐city planning and national mobility solutions for public‐sector organizations.

As of 2025 the company has over 3.600 employees worldwide and operations in 29 countries throughout Europe, Asia-Pacific, the Americas, the main locations are Netherlands, India, Poland, Germany, USA, Belgium. The Complainant has also a separate division offering fleet management solutions that combine smart navigation with leading-edge tracking & tracing technology.

The Complainant is the owner of various trademark registrations TOMTOM, such as:

• USPTO Trademark n. 78231460 - TOMTOM - Nice Cl.: 9, 38, 39, 42 as of April 14, 2009;
• International Trademark ext. in FI n. 905070 – TOMTOM – Nice Cl.: 9, 38, 39, 41, 42, 45 as of May 4, 2006;
• USPTO Trademark n. 79031570 - TOMTOM - Nice Cl.: 45, 41, 39, 38, 9, 42 as of April 8, 2008;
• International Trademark ext. in FI n. 801582– TOMTOM – Nice Cl.: 9, 42 as of March 31, 2006;
• EUTM n. 018762544 – TOMTOM – Nice Cl. 9, 35, 38, 39, 42 as of February 7, 2023;
• EUTM n. 009060765 – TOMTOM – Nice Cl. 16, 20, 25, 28 as of January 11, 2011;
• EUTM n. 007072689 – TOMTOM – Nice Cl. 9, 35, 38, 39, 42 as of March 9, 2010

The Complainant has been extensively using the TOMTOM denomination on all internet environments including and not limited to the company’s official website https://www.tomtom.com and its official accounts on the major social networks such as Facebook, LinkedIn, Twitter, Instagram, YouTube.

The disputed domain name <mytomtom.com> (hereinafter, the „Disputed Domain Name“) was registered on 9 September 2023 and in accordance with the Complainant, resolve to a pay-per-click (“PPC”) webpage displaying ads and sponsored links referencing the Complainant’s field of activity but redirecting Internet users to third-party websites entirely unconnected with the Complainant or its trademark.

According to Complainant’s non-contested allegations, the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name and the Complainant is not related in any way to the Complainant’s business.

For the purpose of this case, the Registrar confirmed that the Respondent is the current registrant of the Disputed Domain Name and that the language of the registration agreement is English.

The facts asserted by the Complainant are not contested by the Respondent.

COMPLAINANT:

First element: Similarity

The Complainant disputes the following points:

• The Disputed Domain Name is confusingly similar to the trademark TOMTOM, as highlighted by the copies of the trademark registration certificates and printouts of the trademark records published on the online database of the competent Trademark Offices.
• The Disputed Domain Name reproduces the Complainant’s trademark TOMTOM in its entirety, with mere addition of the prefix “my” and the generic Top-Level Domain “.com”. Such additions do not prevent the finding of confusing similarities, as the Complainant’s mark remains clearly recognizable within the Domain Name. Therefore, the Disputed Domain Name fully incorporates the word elements of the Complainant’s trademark. Furthermore, the top level “.com” is merely instrumental to the use in Internet and not able to affect the confusing similarity of the Disputed Domain Name to the Complainant’s trademark.
• In light of the above, the Complainant believes that the Disputed Domain Name is confusingly similar to the prior registered trademarks in which the Complainant has rights.

Second element: Rights or legitimate interest

The Complainant argues the following:

• The Respondent is not a licensee or authorized dealer of the Complainant, nor has he been authorized by the Complainant to use the trademark TOMTOM in the Disputed Domain Name or in any other manner.
• The Complainant is not in possession of, nor aware of the existence of, any evidence demonstrating that the Respondent might be commonly known by the Disputed Domain Name or a name corresponding to the Disputed Domain Name as an individual, business, or other organization.
• Furthermore, the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute.
• The Disputed Domain Name resolves to a “PPC” landing page displaying sponsored commercial links that capitalize on the Complainant’s trademarks. The Respondent is using the Disputed Domain Name solely to attract users for commercial gain by exploiting the Complainant’s TOMTOM trademark, conduct that cannot establish any legitimate interest under paragraph 4(c) of the Policy. Accordingly, the Respondent’s PPC-based use of the Domain Name is inherently illegitimate and cannot, under any circumstances, amount to bona fide, noncommercial or fair use.
• As a final remark on the issue of rights or legitimate interest, it is a consolidated principle that the burden of proof lies on Complainant. However, satisfying the burden of proving a lack of Respondent’s rights or legitimate interests in respect of the Domain Name is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that Complainant shows prima facie evidence in order to shift the burden of production of Respondent.
• For all of the foregoing reasons, the Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Third element: Bad faith

The Complaint argues the following elements:

• As to the assessment of the Respondent’s bad faith at the time of registration, in light of the registration and intensive use of the trademark TOMTOM for many years, the Respondent could not possibly ignore the existence of the Complainant’s trademark, identical to the Disputed Domain Name.
• In light of the use, the Complainant’s trademark TOMTOM enjoys worldwide reputation in the sector of location technology and consumer electronics and the Domain Name was registered on September 11, 2023 which is many years after the Complainant adopted the sign TOMTOM for its items and services.
• By virtue of its extensive worldwide use, the Complainant’s trademark TOMTOM has become a known trademark in the sector of location technology and consumer electronics. Therefore, it is clear that the Respondent was well aware of the trademark TOMTOM and has registered the Domain Name with the intention of referring to the Complainant and its trademarks.
• Considering the inherent distinctiveness of the term "TOMTOM", which is a fanciful word with no specific meaning, and the well-known character of the trademark TOMTOM, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s registered trademarks at the time of the registration of the Domain Name, with which it is confusingly similar.
• In the present case, the trademark TOMTOM has a high degree of distinctiveness, the Respondent has not replied to the cease-and-desist letter and, following the receipt of this notice, has proceeded to offer the Domain Name for sale at an inflated price, clearly with the intention of obtaining an illegitimate financial gain. Moreover, the Domain Name redirects Internet users to a pay-per-click landing page displaying sponsored commercial links wholly unrelated to the Complainant. Such use cannot, under any circumstance, constitute a bona fide or good faith use by the Respondent.
• Furthermore, the Respondent has appeared in quality of Respondent in 110 prior UDRP cases, demonstrating a consistent pattern of abusive domain name registrations. Such an extensive history of adverse proceedings reflects a systematic and deliberate practice of cybersquatting, confirming that the Respondent operates as a professional domain speculator who routinely registers domain names corresponding to third‐party trademarks with the intention of taking profit from them. This repeated behavior strongly underscores the bad faith purposes of the registration and the use of the Disputed Domain Name by the Respondent.
• Moreover, the Disputed Domain Name was registered using deliberately false contact details by the Respondent, thus, underscoring the bad faith of the Registrant in the registration. For instance, the “Registrant City” field at issue lists “Finland”, which therefore cannot constitute a legitimate geographic indication “City” for the registration of the domain name. Such an inexplicable inaccuracy in the registration – and use – of the Disputed Domain Name highlights the mala fide of the Respondent, through the intention of providing incorrect data in an attempt to conceal its identity.
• Based on those elements, the Complainant respectfully submits that the Disputed Domain Name was registered and is being used in bad faith in full satisfaction of this paragraph that requires to demonstrate that the holder of the Disputed Domain Name registers or uses the Disputed Domain Name in bad faith.

RESPONDENT

Respondent did not reply to the Complaint.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is 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 Name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name has been registered and is 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.

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that a Disputed Domain Name should be transferred or cancelled:

(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 are being used in bad faith.

The Panel has reviewed in detail the evidence available to it and has come to the following conclusions concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in the proceeding:

(A) THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT’S RIGHTS.

Paragraph 4(a)(i) of the Policy establishes the obligation of Complainant to demonstrate that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submitted copies of different trademarks registrations pertaining the term TOMTOM for different products, including computer hardware and software to be used with (satellite and/or gps) navigation systems, secured or not secured telecommunication services, automation services and consultation thereof, etc.

The Complainant’s trademarks were registered prior to 2023, the year of the creation date of the Disputed Domain Name.

In the current case, the Disputed Domain Name <mytomtom.com> is composed of the trademark TOMTOM plus the generic English term “MY”.

In assessing confusing similarity, the Panel finds the Disputed Domain Name is confusingly similar to the Complainant’s trademark, as it incorporates the entirety of the TOMTOM trademark plus generic terms “MY”. In this regard, UDRP panels agree that where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See paragraph 1.8. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.1.).

UDRP panels agree that the TLD may usually be ignored for the purpose of determination of identity or confusing similarity between a domain name and the Complainant’s trademark as it is technical requirement of registration. See paragraph 1.11.1 of WIPO Jurisprudential Overview 3.1. Therefore, the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy and the Disputed Domain Name is confusingly similar to Complainant’s TOMTOM mark.

(B) RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME.

The second element of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The generally adopted approach, when considering the second element, is that if a complainant makes out a prima facie case, the burden of proof shifts to the respondent to rebut it with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name; see, for example, CAC Case No. 102333, Amedei S.r.l. v sun xin. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

In this vein, Paragraph 4 (c) provides with circumstances which could prove rights or legitimate interest in the Disputed Domain Name on behalf of the Respondent such as:

(i) before any notice to Respondent of the dispute, Respondent is using or provides with demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the 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 domain name, even if the Respondent has acquired no trademark or service mark rights; 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.

The Respondent did not reply to the Complaint despite the efforts made by this Center to notify the Complaint. In this regard, the Complainant has confirmed in the Complaint that the Disputed Domain Name is not connected with or authorized by the Complainant in any way.

From the information provided by the Complainant, there is no evidence or reason to believe that the Respondent (as individual, business or other organization) has been commonly known by the Disputed Domain Name.

The Respondent’s name “Hulmiho Ukolen” provided in the Registrar’s verification dated 27 January 2026 is all what it links the Disputed Domain Name with the Respondent. Absent of any other evidence such as a personal name, nickname or corporate identifier, the Panel is of the opinion that the Respondent is not commonly known by the Disputed Domain Name.

In terms of the evidence provided by the Complainant, the Disputed Domain Name is currently used to host a PPC website with generic terms such as “GPS Driving Directions”, “Maps and Directions”, etc. Past Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

(See Question 2.9. of WIPO Overview 3.1.).

The Complainant has provided with an argument mentioning that “TOMTOM” is a fanciful word with no specific meaning – including some arguments about the well-known character of the trademark TOMTOM based on previous UDRP decisions; e.g. CAC UDRP Nr. 107065 where the Panel established the following: “The disputed domain name, registered in 2018, came years after the TOMTOM trademark became well-known in the location technology and consumer electronics sectors and is identical to the trademark”.

In this regard and absent of Respondent’s reply, the Panel is of the opinion that the Respondent is trading off the Complainant’s trademark by using it linked to a website with pay per click advertisement regardless of whether the links are related to generic words.

Furthermore, the Complaint has also provided with evidence that the Disputed Domain Name is offered for sale at “GoDaddy” for a minimum offer of 887.44CHF. This is an additional indication that Respondent has a clear intent for commercial gain and therefore, this cannot be considered as a fair use.

In light of the reasons above mentioned, the Panel concludes that the Respondent does not have rights or legitimate interest in the Disputed Domain Name and the Complainant has satisfied the second element of the Policy.

(C) BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME.

Paragraph 4(a)(iii) of the Policy indicates that the Complainant must assert that the Respondent registered and is using the Disputed Domain Name in bad faith.

In this sense, Paragraph 4(b) of the Policy sets out four circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith 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 complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

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 Respondent has engaged in a pattern of such conduct; or

The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product.

For the current case, the evidence at hand confirms that Complainant’s TOMTOM trademark is distinctive and it has a strong reputation in the sector of location technology and consumer electronics. In addition, the Complainant’s trademarks were registered long before the Disputed Domain Name was created.

Furthermore, the Complainant provided with evidence showing that the disputed domain name is currently used to host a pay per click website with generic links. It is well established at different UDRP Panel resolutions that the Respondent cannot disclaim responsibility for content appearing on the website associated with its domain name. (See Question 3.5. of the WIPO Overview 3.1.).

From the Panel’s perspective, the below mentioned elements demonstrate that the Respondent acquired the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product.

In addition, the Complainant has submitted evidence showing that the disputed domain name is offered for sale at sedo.com for a minimum offer of 887.44CHF.  

In terms of the current UDRP practice, previous Panels have found that registration of a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner (or its competitor). However, there are some elements which can infer that the Disputed Domain Name was registered for the bad-faith purpose of selling it; e.g. typo of a famous mark. In this regard, the Panel is convinced that the Respondent’s aim in registering the Disputed Domain Name was to profit from the Complainant’s trademark; in particular taking into account the Respondent’s likely knowledge of the Complainant’s rights as well as the distinctiveness of the Complainant’s trademark.

The Complaint provided with evidence about sending a Cease & Desist (“C&D”) letter to Respondent on 9 January 2026 without receiving any reply by Respondent.

The failure of the Respondent to answer the Complainant’s Complaint and take any part in these proceedings as well as the C&D letter sent by Complainant also suggests in combination with other factors bad faith on the part of the Respondent. Last but not least, the Complainant indicated that the Respondent has appeared in quality of Respondent in different prior UDRP cases, such as UDRP WIPO Case Nr. D2015-2053, Case No. D2015-1519, Case No. D2015-0663, among others. In this vein, UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner; these separate registrations may be brought in a single case. A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of other brand owners.

(See Question 3.1.2. of the WIPO Overview 3.1.).

In light of the evidence presented to the Panel, including: a) the likelihood of confusion between the Disputed Domain Name and the Complainant’s TOMTOM trademarks, b) the lack of reply to this Complaint by Respondent, c) the fact that the Disputed Domain Name is being used for a pay per click website, d) the Disputed Domain Name is offered for sale at GoDaddy for a minimum offer of 887.44CHF and e) The Respondent has been involved in at least three additional UDRP case, the Panel draws the inference that the Disputed Domain Name was registered is being used in bad faith.