WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tumi Inc. v. Gueijuan Xu

Case No. D2018-0448

1. The Parties

The Complainant is Tumi Inc. of South Plainfield, New Jersey, United States of America (“USA” or “United States”), represented by Mendelsohn & Associates, P.C., USA.

The Respondent is Gueijuan Xu of Shaoguan, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <discounttumisaleshop.com>, <shoptumionlinejapan.com>, <tumiclearancestore.com>, <tumijpshops.com>, <tumiluggageoutlets.com>, <tuminewluggageshop.com> and <tumioutletsclearance.com> (the “Domain Names”) 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 February 26, 2018. On February 27, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On February 28, 2018, the Registrar transmitted by e-mail 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 March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2018.

The Center appointed Alan L. Limbury as the sole panelist in this matter on April 3, 2018. 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 sells a range of products around the world, including luggage, handbags, tote bags, brief cases and travel accessories, which are sold through its own retail locations and websites and through its network of authorized resellers.

The Complainant is the proprietor of several United States federally registered trademarks for the word TUMI, including No. 3245012, registered on May 22, 2007 in respect of luggage of various kinds, with claimed first use in 1975.

The Complainant’s registered marks include the mark, No. 3217010, registered on March 13, 2007 (the “TUMI logo mark”).

The Domain Names were registered in the name of the Respondent as follows:

<tuminewluggageshop.com> on May 26, 2017.

<tumioutletsclearance.com> on June 16, 2017.

<tumiclearancestore.com> on June 23, 2017.

<tumiluggageoutlets.com> on October 13, 2017.

<tumijpshops.com> on October 24, 2017.

<shoptumionlinejapan.com> on December 11, 2017.

<discounttumisaleshop.com> on January 4, 2018.

With the exception of <tumiclearancestore.com> and <tumioutletsclearance.com>, which the Respondent does not appear to be actively using, all of the Domain Names resolve to websites displaying the TUMI logo mark and offering luggage and accessories for sale, many of which in association with the TUMI word mark.

5. Parties’ Contentions

A. Complainant

The Complainant says it has long standing and well recognized rights and goodwill in its TUMI marks. The Domain Names are confusingly similar to the TUMI marks.

The Respondent has no rights to or legitimate interests in the Domain Names. There is nothing to indicate that the Respondent is commonly known by the Domain Names. Based upon the information provided by the Registrar, the Respondent is named Gueijuan Xu. The Complainant has not authorized the Respondent to use the TUMI marks in connection with any goods or services nor to own any domain names incorporating them. The Respondent is not an authorized dealer and, even if it were, the Complainant prohibits its authorized dealers from registering domain names that incorporate the TUMI mark. Respondent’s websites also utilize copyrighted content owned by the Complainant, including stolen images of Tumi products.

The Respondent has registered and is using the Domain Names in bad faith under the Policy, paragraphs 4(b)(iii) and 4b(iv) in that the Respondent is using the Domain Names intentionally to disrupt the business of the Complainant and to capitalize on the goodwill that the Complainant has developed in its TUMI marks by creating a likelihood of confusion with those marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites and the goods and services offered at such websites.

The Respondent has engaged in a pattern of such conduct here, having also registered the domain names <jptumishoponline.com>, <shoptumiaustraliaoutlet.com> and <tumirakutenstore.com> on April 27, 2017, March 23, 2017, and May 19, 2017 respectively. On November 10, 2017 these domain names were ordered to be transferred to the Complainant. See Tumi Inc. v. Gueijuan Xu, WIPO Case No. D2017-1773.

The Respondent’s registration of <tumiclearancestore.com> and <tumioutletsclearance.com> is consistent with the Respondent’s systematic registrations of other domain names in bad faith. Accordingly, although the Respondent does not appear to be currently using these Domain Names, the Respondent’s registration of them nonetheless amounts to registration in bad faith under the Policy, paragraph 4(b)(ii).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to obtain transfer of the Domain Names, the Complainant must prove the following three elements: (i) the Respondent’s 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 the Domain Names; and (iii) the Respondent has registered the Domain Names and is using them in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it has registered trademark rights in the word TUMI and in the TUMI logo mark.

Each of the Domain Names comprises the Complainant’s TUMI mark, together with common descriptive words, none of which are sufficient to distinguish the Domain Names from the distinctive TUMI mark. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8:“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

The specific Top-Level Domain of the Domain Names, “.com”, is generally regarded as irrelevant for the purpose of determining whether the Domain Names are identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s TUMI mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

“(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.”

Section 2.1 of the WIPO Overview 3.0 provides:

“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.”

The Panel finds that the TUMI mark is distinctive and widely known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of the Respondent. The Panel also notes that none of the websites of the actively used Domain Names accurately and prominently disclose the Respondent’s relationship with the Complainant. The Respondent has made no attempt to provide evidence demonstrating rights or legitimate interests in any of the Domain Names. In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. The Complainant invokes sub-paragraphs (ii), (iii) and (iv):

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Panel has no hesitation in finding that the Respondent was fully aware of the Complainant’s TUMI mark when registering all the Domain Names and, in relation to those Domain Names which the Respondent has used to resolve to websites featuring the TUMI logo mark and offering luggage and accessories for sale, namely <discounttumisaleshop.com>, <shoptumionlinejapan.com>, <tumijpshops.com>, <tumiluggageoutlets.com> and <tuminewluggageshop.com> the Respondent’s conduct falls within the circumstances set out in sub-paragraph 4(b)(iv) of the Policy. The Panel therefore finds that the Respondent registered and has used these Domain Names in bad faith.

As for the Domain Names that do not appear to have been actively used, namely <tumioutletsclearance.com> and <tumiclearancestore.com>, these registrations clearly form part of a pattern, as shown below:

<shoptumiaustraliaoutlet.com> was registered by the Respondent on March 23, 2017.

<jptumishoponline.com> was registered by the Respondent on April 27, 2017.

<tumirakutenstore.com> was registered by the Respondent on May 19, 2017.

<tuminewluggageshop.com> was registered by the Respondent on May 26, 2017.

<tumioutletsclearance.com> was registered by the Respondent on June 16, 2017.

<tumiclearancestore.com> was registered by the Respondent on June 23, 2017.

The Complaint in Tumi Inc. v. Gueijuan Xu, surpra, regarding the first three domain names mentioned above, was formally notified to the Respondent on September 25, 2017.

<tumiluggageoutlets.com> was registered by the Respondent on October 13, 2017. <tumijpshops.com> was registered by the Respondent on October 24, 2017.

The decision of the Panel to order transfer of the domain names the subject of Tumi Inc. v. Gueijuan Xu, surpra was made on November 10, 2017. This may not have been the date on which the decision was transmitted to the Respondent.

<shoptumionlinejapan.com> was registered by the Respondent on December 11, 2017.

<discounttumisaleshop.com> was registered by the Respondent on January 4, 2018.

This chronology makes clear that the Respondent registered all the Domain Names as part of a pattern and that four of the Domain Names were registered even after the Respondent received formal notice of the Complaint in Tumi Inc. v. Gueijuan Xu, surpra.

However, the Panel is not satisfied that the purpose of the Respondent in registering <tumioutletsclearance.com> and <tumiclearancestore.com>, as part of the above pattern, was to prevent the owner of the TUMI trademark from reflecting the mark in a corresponding domain name, nor to disrupt the business of a competitor. Rather, it appears that these Domain Names were registered for possible use for the Respondent’s commercial gain, as were the other Domain Names the subject of this administrative proceeding. Accordingly, the circumstances set out in the Policy, sub-paragraphs 4(b)(ii) and (iii) are not satisfied.

This does not conclude the matter, since passive holding may constitute bad faith use. Section 3.3 of the WIPO Overview 3.0 provides:

“Can the “passive holding” or non-use of a domain name support a finding of bad faith?

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

Here the Panel finds the Respondent was well aware of the distinctive TUMI mark when registering the <tumioutletsclearance.com> and <tumiclearancestore.com> Domain Names; did so for potential commercial gain by confusing Internet users and has chosen not to respond to this Complaint, as happened in Tumi Inc. v. Gueijuan Xu, WIPO Case No. surpra.

Under these circumstances, the Panel finds these two Domain Names were registered and are being used 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 Domain Names, <discounttumisaleshop.com>, <shoptumionlinejapan.com>, <tumiclearancestore.com>, <tumijpshops.com>, <tumiluggageoutlets.com>, <tuminewluggageshop.com> and <tumioutletsclearance.com>, be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Date: April 8, 2017