DECISION

 

Tumi Inc. v. kang kai

Claim Number: FA1604001671953

 

PARTIES

Complainant is Tumi Inc. (“Complainant”), represented by Jeremiah A. Pastrick of Continental Enterprises, Indiana, USA.  Respondent is kang kai (“Respondent”), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cheapesttumionlinestore.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 25, 2016; the Forum received payment on April 25, 2016.

 

On April 26, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cheapesttumionlinestore.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cheapesttumionlinestore.com.  Also on April 27, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On May 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant has rights in the TUMI mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,588,479, registered July 2, 2002). Respondent registered the <cheapesttumionlinestore.com> domain name in October 2014.

2.    Respondent’s <cheapesttumionlinestore.com> domain name is confusingly similar to the TUMI mark because it contains the mark along with generic or descriptive terms and the “.com” generic top-level domain (“gTLD”).

3.    Respondent is not commonly known by the <cheapesttumionlinestore.com> domain name because the available WHOIS information lists “kang kai” as Registrant and because Respondent is not permitted to use the TUMI mark.

4.    Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains content owned by Complainant.  

5.    Respondent uses the <cheapesttumionlinestore.com> domain name in bad faith to disrupt Complainant’s business and to attract Internet users for commercial gain. Respondent registered the domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the TUMI mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the TUMI mark.  Respondent’s domain name is confusingly similar to Complainant’s TUMI mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <cheapesttumionlinestore.com> domain name, and that Respondent registered and uses the domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant has rights in the TUMI mark through its registration with the USPTO (e.g., Reg. No. 2,588,479, registered July 2, 2002). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (FORUM Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).

 

Complainant contends that Respondent’s <cheapesttumionlinestore.com> domain name is confusingly similar to the TUMI mark because it contains the mark along with generic or descriptive terms, such as “cheapest,” “online,” and “store.” The domain also contains the gTLD “.com.” Because the Panel considers these added terms generic or descriptive, it finds that the <cheapesttumionlinestore.com> domain name is confusingly similar to the TUMI mark according to Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (FORUM Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the <cheapesttumionlinestore.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant alleges that Respondent is not commonly known by the <cheapesttumionlinestore.com> domain name because the available WHOIS information lists “kang kai” as Registrant and because Respondent is not permitted to use the TUMI mark. Consequently, the Panel finds that Respondent is not commonly known by the <cheapesttumionlinestore.com> domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (FORUM September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

Complainant argues that Respondent fails to use the <cheapesttumionlinestore.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains content owned by Complainant, including images of Complainant’s products. Complainant has provided screenshots of the disputed domain name as well as screenshots of its own website to demonstrate this use. Accordingly, the Panel finds that Respondent fails to use the <cheapesttumionlinestore.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (FORUM Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant urges that Respondent uses the <cheapesttumionlinestore.com> domain name to disrupt Complainant’s business. Complainant has provided screenshots of the Respondent’s domain name as well as screenshots of its own website, which show that Respondent is selling products similar to those sold by Complainant branded with the TUMI mark. This evidence is sufficient to demonstrate that Respondent uses the <cheapesttumionlinestore.com> domain name in bad faith under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (FORUM Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (FORUM December 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”).

 

Complainant alleges that Respondent uses the <cheapesttumionlinestore.com> domain name in bad faith under Policy ¶ 4(b)(iv) by competing with Complainant or otherwise using the domain name to attract customers for commercial gain. Complainant’s exhibits supports this contention.  Thus, the Panel finds this evidence sufficient to establish that Respondent uses the <cheapesttumionlinestore.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (FORUM May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (FORUM June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

Complainant maintains that Respondent registered the <cheapesttumionlinestore.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the TUMI mark. Complainant urges that Respondent had such knowledge because of Complainant’s longstanding use of the TUMI mark and because of the content of the resolving website.  The Panel agrees that finds that Respondent registered the <cheapesttumionlinestore.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (FORUM Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cheapesttumionlinestore.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  May 23, 2016