Complainant is TUMI, Inc. of Chicago, Illinois, United States of America ("US"), represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Li Ning of "Guangzhoushi", Alabama, US. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2014. On October 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 29, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 26, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on December 3, 2014. 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
Complainant, TUMI, Inc. is a corporation that specializes in the manufacture and distribution of premium travel, business and lifestyle accessories including most notably luggage. Complainant is the owner of several federally-registered trademarks. It has been using its mark since 1975. Respondent registered the disputed domain names in 2014. 5. Parties' Contentions A. Complainant
The Complainant has been engaged in the manufacture and distribution of premium travel, business and lifestyle accessories including luggage, in connection with its TUMI trademark, since at least as early as 1975. Complainant owns several US Trademark Registrations including: TUMI, US Trademark Registration Number 3245012, registered May 22, 2007; TUMI, US Trademark Registration Number 2588479, registered July 2, 2002; TUMI (stylized) , US Trademark Registration Number 3217010, registered March 13, 2007.
A federal trademark registration is prima facie evidence of the validity of the registered mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark.
Complainant also owns a number of domain name registrations which wholly incorporate Complainant's TUMI mark, including but not limited to: , , , and .
Complainant's trademark and domain names have been registered and in use since long before Respondent's registrations of the disputed domain names in 2014.
Complainant has used the TUMI mark continuously since at least as early as 1975 in connection with the advertising, offering for sale, and sale of its various luggage products in the US and elsewhere. Complainant's use of the TUMI trademarks has resulted in hundreds of thousands of customers worldwide and millions of dollars in sales. Complainant has expended millions of dollars in advertising and promoting its products under its TUMI trademarks in a variety of media throughout the world, including print and television and on the Internet. Complainant's TUMI products are sold exclusively through Complainant's own stores and website and through authorized dealers including national stores such as Nordstrom, Macy's, Bloomingdales, Nagano Tokyu Department Store and others.
Respondent registered the disputed domain names in 2014. Respondent has never been authorized to use the TUMI marks. Respondent's disputed domain names resolve to web pages some of which purport to offer for sale Complainant's products, although Complainant contends that Respondent's products are counterfeits. Respondent has caused and is likely to cause consumer confusion and has registered the disputed domain names in bad faith. Complainant also notes that Respondent has been found in prior UDRP cases to have registered several other domain names in bad faith and been ordered to transfer such domain names. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant's federal trademark registrations and widespread use, advertising, and promotion of one or more of the TUMI marks since 1975 sufficiently establish rights in the mark pursuant to paragraph 4(a)(i) of the UDRP.
The disputed domain names incorporate Complainant's TUMI trademark in its entirety. The addition of the terms "outlet", "shop", "online", "japan", "jp", "store", and "sale" does not distinguish the disputed domain names from the TUMI trademarks. If anything, these terms add to the confusion. See Mesosystem, S.A. v. LeaseD, WIPO Case No. D2013-0711 (holding that the addition of descriptive or generic term is not a sufficient basis to remove confusing similarities in a domain); Giorgio Armani S.p.A. Swiss Branch, Mendrisio v. Gabriella Chung,WIPO Case No. D2013-0821 ("adding purely descriptive words which define the product or service offered via the website serves only to compound similarity when used in conjunction with a mark to which the Complainant has rights.").
Further it is well settled that the addition of a generic Top-Level Domain such as ".com" fails to distinguish the domain name from the mark pursuant to paragraph 4(a)(i) of the UDRP.
Complainant has therefore shown that the disputed domain names are confusingly similar to Complainant's mark. B. Rights or Legitimate Interests
Complainant's first use and first registration of its TUMI trademark predates any use by Respondent
may have made of the disputed domain names by more than thirty years.
Additionally, Complainant registered the domain names and began operating its website at "www." and "www." several years before Respondent registered the disputed domain names in this case.
Respondent must have been aware of Complainant's domain names and web sites associated with same before he registered the disputed domain names because Complainant's sites were operational, and thus easily accessible to Respondent, at the time Respondent registered the disputed domain names, and because Respondent offers products bearing the TUMI trademarks at those web sites, and because Complainant's mark and line of products were well known and widely advertised and sold for many years before Respondent registered the disputed domain names.
Respondent also is not commonly known by the disputed domain names, which are plainly different from Respondent's name.
Complainant contends that, based on its investigation, Respondent's products are counterfeits. If so, Respondent's use of the disputed domain names to sell products bearing confusingly similar reproductions of Complainant's marks plainly cannot constitute a bona fide offering of goods.
But even if Respondent could show that it was a reseller of authentic goods of Complainant's, that still would not on the facts of this case and in the absence of a proper disclaimer establish that it had rights or legitimate interests. See Giorgio Armani S.p.A. Swiss Branch, Mendrisio v. Gabriella Chung, supra (holding that without a proper disclaimer, even an authorized retailer failing to abide by controls imposed by the trademark owner does not have legitimate interests in to a domain name).
Complainant has never authorized Respondent to use its mark.
Respondent has not shown or attempted to show any rights or legitimate interests in the disputed domain names.
For the above reasons, Complainant has shown that Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Respondent is diverting Complainant's customers or potential customers seeking information about Complainant to the website to which the disputed domain names resolve, where Respondent presumably obtains commercial benefits through the sale of unauthorized and possibly counterfeit products bearing reproductions of the Complainant's trademarks. This constitutes registration and use in bad faith. See LeSportsac, Inc. v. Yang Zhi,WIPO Case No. D2013-0482 ("the Respondent in this case did intentionally attract for commercial gain Internet users to their websites by creating a likelihood of confusion with the Complainant's mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.").
Complainant further submits evidence that Respondent has a lengthy history of registering domain names containing the trademarks of third parties and has been the subject of numerous successful UDRP complaints in the recent past. This evidence further supports a finding of registration and use of the disputed domain names in bad faith.
For the above reasons, Complainant has shown that Respondent registered and is using the disputed domain names in bad faith. 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 , , , , , , , , , , , and be transferred to Complainant.
Michael A. Albert
Sole Panelist
Date: December 21, 2014
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