The Complainant is TUMI, Inc. of Chicago, Illinois, United States of America, represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is Zhou Yifan of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 21, 2015. On May 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2015.
The Center appointed Andrea Dawson as the sole panelist in this matter on June 22, 2015. 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
The Complainant is an American company engaged in the manufacture and distribution of premium travel, business and lifestyle accessories including most notably luggage.
The Complainant is the owner of a series of trademark registrations. (Annex D of the Complaint)
- TUMI, U.S. Trademark Registration Number 3245012, Registered May 22, 2007;
- TUMI, U.S. Trademark Registration Number 2588479, Registered July 2, 2002;
- , U.S. Trademark Registration Number 3217010, Registered March 13, 2007.
The Complainant has used one or more of the TUMI marks 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 United States and elsewhere.
The Complainant's TUMI products are sold exclusively through the Complainant's own stores and website and, through authorized dealers. Authorized dealers include United States of America stores, such as Nordstrom, Macy's, and Bloomingdales amongst others.
The Complainant also owns a number of domain name registrations which wholly incorporate the Complainant's TUMI mark, including, but not limited to , , and . (Annex C of the Complaint)
The disputed domain name was registered on September 23, 2014. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain name is identical or confusingly similar to the trademark TUMI. The disputed domain name incorporates in its entirety the TUMI mark with only the addition of the terms "outlet" and "shop", which does not distinguish the disputed domain name from the TUMI trademark. If anything, these terms add to the confusion since the terms used provide a false message to Internet users that the Complainant is affiliated in some way with the disputed domain name/website.
The Complainant further states that it is well settled that the addition of a generic Top-Level Domain ("gTLD") such as ".com" fails to distinguish the disputed domain name from the mark pursuant to the UDRP.
The Complainant indicates that its first use and first registration of its TUMI trademark predates any use Respondent may have made of the disputed domain name as a trade name, domain name, mark, or common name. The disputed domain name was registered in 2014, more than thirty years after Complainant first used its TUMI trademark.
The Complainant further indicates that the Respondent also has no rights or legitimate interest in TUMI or the disputed domain name because he is not using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. A review of the website at "www." to which the disputed domain name resolves reveals that it prominently displays the TUMI mark, and is selling counterfeit merchandise with the TUMI trademark.
The Complainant states that it has not authorized or licensed Respondent to manufacture, sell or offer any merchandise using any TUMI trademark (or any confusingly similar mark), through the disputed domain name. The Respondent's use of the disputed domain name to sell products bearing confusingly similar reproductions of the Complainant's marks does not constitute a bona fide offering of goods.
The Complainant adds that the Respondent currently is not using the disputed domain name for a noncommercial purpose. An expectation of developing a legitimate noncommercial interest in a domain name is insufficient to defeat the prima facie case that the use is unauthorized.
The Complainant states that the Respondent is diverting Complainant's customers or potential customers seeking information about the Complainant to the website which the disputed domain name resolves, where the Respondent obtains commercial benefits through the sale of counterfeit products bearing reproductions of the Complainant's trademark. This constitutes registration and use in bad faith.
The Complainant states the Respondent is actively using, such website or other on-line location to intentionally misdirect and attract for commercial gain Internet users searching for Complainant's authorized goods and services by creating a likelihood of confusion with Complainant's mark to the source, sponsorship, affiliation or endorsement of the Respondent's website or location.
The Complainant finally states that given the fame of Complainant's TUMI trademark and the fact that the Respondent is using the disputed domain name to sell counterfeit products bearing reproductions of the Complainant's trademark, it is clear that the Respondent had knowledge of the TUMI trademark when he registered the disputed domain name.
Consequently, in view of the above-mentioned circumstances, the Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademarks; the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests that the Panel order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The disputed domain name is 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 name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has been able to demonstrate that it has rights to the trademark TUMI.
The disputed domain name consists of the term "tumi", with the addition of the generic terms "shop" and "outlet". As indicated by the Complainant, previous UDRP panels have found that the mere addition of a generic term to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.
Furthermore, the addition of generic terms used in this particular case only add confusion, instead of distinctiveness, since the terms used provide a false message to Internet users that the Respondent may be affiliated in some way with the Complainant.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name, in the absence of which the panel is entitled to rely on the complainant's prima facie case that the respondent lacks such rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; see also Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent),WIPO Case No. D2000-0704).
The Panel has reviewed the evidence provided by the Complainant and can conclude that the Respondent was not making a legitimate use of the disputed domain name.
The Respondent is not using or preparing to use the disputed domain name with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel was able to conclude with the evidence offered by the Complainant that the website prominently displayed the TUMI mark, and that it was selling counterfeit merchandise with the TUMI trademark. (Annex A of the Complaint). The Respondent's use of the disputed domain name to sell counterfeit products of the Complainant does not constitute a bona fide offering of goods.
Finally, the Panel also notes that the Complainant has indicated that it has never authorized the Respondent to use the TUMI trademark nor sell TUMI products; consequently, the Respondent cannot show himself to be a reseller that is authorized by the Complainant to use the disputed domain name to sell the Complainant's products. Moreover, even if the products sold on the website at the disputed domain name are not counterfeit and Respondent is an unauthorized reseller of the Complainant's products, nothing on the website informs the Internet users of the relationship (or lack thereof) between the Respondent and the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant's rights in the Complainant's trademark and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademark at the time of the registration of the disputed domain name.
As mentioned by the Complainant, it is unlikely that the Respondent was unaware of Complainant when it registered the disputed domain name, since the Complainant owns numerous trademark registrations that are well known; therefore, in the Panel's assessment, it is unlikely to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name. Furthermore the Panel finds that it is not possible to conclude that the Respondent did not have the Complainant's trademark in mind when registering the disputed domain name, especially when reviewing the screenshots provided in the Complaint one can clearly see that the products sold on the website are the same products sold by the Complainant, luggage, which indicates that the Respondent had perfect knowledge of the Complainant's existence and the products it provided. It cannot be a mere coincidence that the website at the disputed domain name offered the same products as those of the Complainant.
The Complainant, in Annex A of the Complaint, provided evidence of the above where it is demonstrated that the Respondent is offering for sale and selling products bearing the Complainant's trademark.
In addition to the above, the Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of his website. The Respondent uses the disputed domain name to direct Internet users to a website offering for sale counterfeit goods bearing the TUMI trademark, which are likely to generate revenues. Therefore, the Panel is of the opinion that the Respondent is taking undue advantage of the Complainant's trademark to generate profits.
As previously noted, even if the products sold on the website at the disputed domain name are not counterfeit, there is no evidence on the website about the relationship (or lack thereof) between the Respondent and the Complainant, thereby creating confusion as to the sponsorship or endorsement of the website.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; consequently, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 name be transferred to the Complainant.
Andrea Dawson
Sole Panelist
Date: July 6, 2015
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