The Complainant is Tumi Inc. of South Plainfield, New Jersey, United States of America (“USA”), represented by Mendelsohn & Associates, P.C., USA.
The Respondent is Joyce Cheadle of China.
The disputed domain names <tumifeen.com> and <tumiwevien.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd.; the disputed domain name <tumioen.com> (together the “ Domain Names”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrars”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2018. On December 20, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On December 21, 2018, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 26, 2018.
On December 21, 2018, the Center sent an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 11, 2019. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on January 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on February 8, 2019. 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.
Founded in 1975, the Complainant is a global well-known producer of luggage, hand bags, tote bags, brief cases and travel accessories under the brand Tumi. The Complainant’s Tumi products are sold through retail stores, websites operated by the Complainant and authorized resellers such as departmental stores like Nordstrom, Macy’s and Bloomingdales in the USA.
The Complainant’s TUMI trade mark is registered in the USA in a number of classes including class 18 with the earliest trade mark submitted in evidence dating back to July 2, 2002 (registration No. 2588479) (the “Trade Mark”). The Complainant’s main website is found at “www.tumi.com”.
The Domain Names were registered on the following dates:
<tumioen.com> - October 27, 2018;
<tumiwevien.com> - November 19, 2018;
<tumifeen.com> - November 30, 2018.
The Domain Names were all connected to websites which bear the Trade Mark and photographs and text the copyright which belong to the Complainant. They also offered for sale what appear to be the Complainant’s products but at a substantially reduced price (the “Websites”). The Websites are no longer active at the time of the writing of this decision.
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the registration agreements for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
a) The Domain Names are in the English language;
b) The Websites were entirely in English;
c) The products offered for sale on the Website were offered in USD currency;
d) The Complainant and its representative is unable to communicate in Chinese, and this disadvantage would delay these proceedings; and
e) The Respondent has not responded with a request to continue the case in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names contain the Complainant’s distinctive Trade Mark in its entirety in combination with a mixture of letters, “feen”, “oen” and “wevien”. The addition of these elements does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Names. See, N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or 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.
The Complainant submits that the Respondent is not commonly known by the Domain Names or any name that incorporates the Trade Mark. The Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Trade Mark or apply for any domain name that incorporates the Trade Mark.
The Websites purported to offer for sale products that were possibly counterfeit as they were offered at a much lower price than the Complainant’s goods. The Websites also featured copyrighted images and text from the Complainant’s website. The Websites are arranged in such a way as to appear that they are the website of the Complainant, and lack any disclaimer or explanation of the Respondent’s relationship with the Complainant. All of the above is evidence that the Websites do not point towards any bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register the Domain Names comprising a trade mark which it has no connection to other than purporting to sell products bearing this trade mark which it has not been authorized to by the Complainant. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. It is implausible that it was unaware of the Complainant when it registered the Domain Names especially since the websites bore the Trade Mark and images and text the copyright of which belong to the Complainant. The Websites also offered for sale products bearing the Trade Mark.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Names are also used in bad faith. The Respondent was clearly seeking to benefit from the Complainant’s reputation and goodwill to attract traffic to Websites for commercial gain. Using the Domain Names to intentionally attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s as the source, sponsorship, affiliation or endorsement of the website is bad faith in accordance with paragraph 4(b)(iv) of the Policy.
From the above, the Panel finds that the Respondent has registered and used the Domain Names in bad faith and the Complainant has succeeded in proving the third element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <tumifeen.com>, <tumioen.com> and <tumiwevien.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: February 21, 2019