WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumi Inc. v. Gueijuan Xu
Case No. D2017-1773
1. The Parties
The Complainant is Tumi Inc. of South Plainfield, New Jersey, United States of America ("United States"), represented by Mendelsohn & Associates, P.C., United States.
The Respondent is Gueijuan Xu of, Hong Kong, China.
2. The Domain Names and Registrars
The disputed domain names <jptumishoponline.com>, <shoptumiaustraliaoutlet.com> and <tumirakutenstore.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 names. 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 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on October 27, 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
Founded in 1975, the Complainant Tumi is global company dealing in a variety of product categories including, but not limited to, luggage, handbags, tote bags, brief cases and travel accessories. Tumi products are sold either direct-to-consumer by Tumi via brick & mortar retail locations or Tumi-operated websites or through Tumi's network of authorized resellers such as Nordstrom, Macy's, Bloomingdales, etc.
The Complainant is the owner of the trademark TUMI in the United States of America in various classes under registration numbers 3245012, 2884996, 2588479, 2919221, 3981883, 3217010, among which the earliest registration (2588479) dates back to July 2, 2002.
The Respondent is Gueijuan Xu of China.
The disputed domain names <jptumishoponline.com>, <shoptumiaustraliaoutlet.com> and <tumirakutenstore.com> were registered on April 27, 2017, March 23, 2017, and May 19, 2017 respectively. The disputed domain names resolve to websites features the Complainant's trademark and displays and offers for sale numerous products bearing the Complainant's trademarks. Internet users can buy products in connection with the Complainant from the websites under the disputed domain names. The websites provide state that they are "トゥミ公式サイト" (translated as "Tumi official website"), "Tumi australia outlet", and "Tumi トゥミ公式サイト" (translated as "Tumi official website") respectively.
5. Parties' Contentions
Identical or confusingly similar
The Complainant submits that the disputed domain name contains the registered trademark TUMI in full which might mislead the public that the disputed domain names are somehow connected to the Complainant.
The Complainant also submits that the additional menagerie of descriptive, generic terms ("outlet", "shop", "store" and "online") or geographic indicators ("jp" and "Australia") does not mitigate the confusing use of the trademark.
No rights or legitimate interests
The Complainant submits that the Respondent is not holder of a trademark TUMI, has no rights or legitimate interests in the name "tumi", and is not commonly known by the disputed domain names since the Respondent is an individual and/or an organization named Gueijuan Xu.
The Complainant also submits that it has not licensed nor otherwise permitted the Respondent to use the TUMI marks, and the Respondent is not a Tumi Authorized Dealer, even if it were, the Complainant prohibits its authorized dealers from registering domain names that incorporate the TUMI mark.
The Complainant further submits that the Respondent' websites utilize copyrighted content owned by Tumi, including stolen images of Tumi products.
Registered and is being used in bad faith
The Complainant submits that the Respondent is: (1) using the disputed domain name <shoptumiaustraliaoutlet.com> intentionally to disrupt the business of the Complainant; and (2) using all the disputed domain names in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website; (3) utilizing the Complainant's TUMI marks and copyrighted content on its sites to sell products of a suspicious origin.
The Complainant also submits that given its first use of the TUMI mark in 1975 which predates the disputed domain names' registrations by almost 40 years the Respondent was or should have been aware of the TUMI Mark prior to registering the disputed domain names and this constitutes bad faith registration.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and used in bad faith.
A. Identical or Confusingly Similar
The disputed domain names <jptumishoponline.com>, <shoptumiaustraliaoutlet.com> and <tumirakutenstore.com> all contain the Complainant's TUMI mark in full.
The Panel notes that the Complainant has not submitted evidence it holds trademarks in China, where the Respondent is located. However, the ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel's further substantive determination under the second and third elements. See section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The disputed domain name <jptumishoponline.com> comprises of "jp" which is shorthand for Japan, the Complainant's TUMI mark, and the generic words "shop", and "online" followed by the generic Top-Level Domain ("gTLD") ".com".
The disputed domain name <shoptumiaustraliaoutlet.com> comprises of the Complainant's TUMI mark and the generic words "shop" and "outlet" with the geographic description "Australia" followed by the gTLD ".com".
The disputed domain name <tumirakutenstore.com> comprises of the Complainant's TUMI mark, the word "rakuten" which is the name of a Japanese electronic commerce and Internet company serving 29 countries and regions, and the generic "store" and succeeded by the gTLD ".com".
The Panel finds the disputed domain names are confusingly similar to the Complainant's registered trademark TUMI. The gTLD is disregarded and the addition of the descriptive or generic words is insufficient to dispel any confusion.
The first part of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights and legitimate interests. These are:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
The Respondent has no connection with the Complainant and has never sought or obtained any trademark registrations for the trademark TUMI. The Respondent is not a licensee of the Complainant and is not common known as "shoptumiaustraliaoutlet", "jptumishoponline.com," or "tumirakutenstore.com". It, therefore, has no rights or legitimate interests in the disputed domain names.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
It is highly likely that the Respondent knew of the Complainant when the Respondent registered the disputed domain names as each of them comprises of the Complainant's trademark in full and a few descriptive, generic words and/or geographic descriptions followed by the gTLD ".com". The pages have been used to advertise and offer TUMI products and the Respondent falsely listed itself as the "Tumi official website" or "Tumi Australia outlet" on the websites. This indicates the Respondent's intention was to cause confusion so that Internet users believe that the sites were linked to the Complainant's business.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
Having examined all the circumstances of the case the Panel finds that the Respondent registered, used and is using the disputed domain names in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
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, <jptumishoponline.com>, <shoptumiaustraliaoutlet.com> and <tumirakutenstore.com>, be transferred to the Complainant.
Date: November 10, 2017