WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumi Inc. v. Ming Zhang, Zhang Ming
Case No. D2017-1771
1. The Parties
The Complainant is Tumi Inc. of South Plainfield, New Jersey, United States of America ("US"), represented by Mendelsohn & Associates, P.C, US.
The Respondent is Ming Zhang, Zhang Ming of Shaoguan, China.
2. The Domain Names and Registrar
The disputed domain names <clearancetumishop.com>, <tumiluggagesalecheap.com> and <tumishopclearance.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2017. On September 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 11, 2017.
The Center appointed Adam Taylor as the sole panelist in this matter on October 17, 2017. 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, incorporated in 1975, sells luggage and other products through retail stores and online as well as via a network of authorised resellers.
The Complainant owns a number of registered trade marks for TUMI including US trade mark no. 2884996, filed on April 12, 2000, registered on September 14, 2004, in international classes 6, 9 and 16.
The disputed domain names were registered on the following dates:
<clearancetumishop.com>: December 7, 2016
<tumishopclearance.com>: January 15, 2017
<tumiluggagesalecheap.com>: January 16, 2017
The Respondent has used the disputed domain names <tumishopclearance.com> and <tumiluggagesalecheap.com> for websites offering luggage for sale under the Complainant's name and branding. There is no evidence that the disputed domain name <clearancetumishop.com> has been used for an active website.
5. Parties' Contentions
The following is a summary of the Complainant's contentions:
The disputed domain names are confusingly similar to the Complainant's trade marks. They consist of the Complainant's trade mark plus a menagerie of descriptive, generic terms. The latter do not mitigate the confusing use of the trade mark.
The Respondent lacks rights and legitimate interests.
There is nothing to indicate that the Respondent is commonly known by the names reflected in the disputed domain names.
The Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trade marks.
The Respondent registered and is using the disputed domain names in bad faith, namely to disrupt the Complainant's business and to create a likelihood of confusion with the Complainant's mark.
The Respondent was fully aware of the Complainant and its marks when it registered the disputed domain names.
The Complainant's first use of its trade mark predates the disputed domain names by some 40 years.
The Respondent is using the Complainant's marks as well as copyright-infringing images of the Complainant's products in order to sell goods "of a suspicious origin".
The Respondent is systematically registering domain names to prevent the Complainant and other trade mark owners from reflecting their marks in corresponding domain names. The Respondent has also registered the domain names <cartiereyeglassesframes.net> and <cheapoakleysknockoff.com>, which are the subject of a default court judgment in the US.
Although the disputed domain name <clearancetumishop.com> is not currently in use, it is nonetheless consistent with the Respondent's systematic registration of other domain names in bad faith. It is only a matter of time before it is used in the same manner as the other domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark TUMI virtue of its registered trade marks for that term.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant's distinctive trade mark is readily recognisable within each of the disputed domain names and, accordingly, the addition of a "menagerie" (as the Complainant puts it) of additional descriptive terms is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that each of the disputed domain names is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence that the disputed domain name <clearancetumishop.com> has ever been used.
As for the other two disputed domain names, <tumishopclearance.com> and <tumiluggagesalecheap.com>, the Panel has concluded below that the Respondent has used these to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of those disputed domain names could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
"… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
Furthermore, there is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
All three of the disputed domain names include the Complainant's distinctive trade mark.
Two of them, <tumishopclearance.com> and <tumiluggagesalecheap.com>, have been used for websites which set out to impersonate the Complainant, including use of the Complainant's logo, in order to sell what are represented as the Complainant's products.
The Panel readily concludes that the Respondent has registered and used these two disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
While there is no evidence that the other disputed domain name, <clearancetumishop.com>, has been used for a website, nonetheless it is plainly part of the same illicit pattern. Indeed it comprises the same terms as the disputed domain name <tumishopclearance.com> differing only in the order of the words. In the Panel's view, the disputed domain name <clearancetumishop.com> constitutes a passive holding in bad faith, as explained in section 3.3 of WIPO Overview 3.0, including on grounds of the distinctiveness of the Complainant's mark, the failure of the Respondent to respond and the implausibility of any good faith use.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <clearancetumishop.com>, <tumiluggagesalecheap.com> and <tumishopclearance.com> be transferred to the Complainant.
Date: October 27, 2017