Complainant is PUMA SE, Germany, represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, Germany.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Myra Kern, bost company, Armenia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to Complainant on July 30, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 3, 2020. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 9, 2020. 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 Complainant has been using its PUMA trademark in connection with clothing and apparel since at least 1978. Complainant owns various trademark registrations around the world for its PUMA trademark (“PUMA Mark” or “Complainant’s Mark”), including International Registration number 437626 (registered on April 12, 1978), designating Armenia, Respondent’s purported domicile, among other jurisdictions of protection. The disputed domain name, Complainant argues that the disputed domain name is confusingly similar to Complainant’s PUMA Mark because it incorporates the trademark fully and identically. Complainant argues that the addition of the term “buy” in the disputed domain name is insufficient to distinguish it from Complainant’s Mark since “buy” is a descriptive term. Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way and was never licensed or authorized to use Complainant’s Mark. Furthermore, Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it is being used to sell counterfeit goods bearing Complainant’s Mark. Lastly, Complainant alleges that Respondent “obviously” has registered and is using the disputed domain name in bad faith. Complainant argues that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the PUMA Mark through its various national and international registrations. With Complainant’s rights in the PUMA Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which the disputed domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “[…] reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. It is furthermore well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[w]here 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”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Here, Complainant’s PUMA Mark is fully and identically incorporated in the disputed domain name. The inclusion of the descriptive term “buy” does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s PUMA Mark. B. Rights or Legitimate Interests Under the Policy, 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 a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice 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 (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark 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 or to tarnish the trademark or service mark at issue. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. UDRP panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. On the other hand, UDRP panels have found that circumstantial evidence, such as evidence that the goods are offered disproportionately below market value, can support a complainant’s otherwise credible claim of illegal respondent activity. WIPO Overview 3.0, section 2.13.2. Here, Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the PUMA Mark in any way. It is also clear that Respondent is not using the disputed domain name for any legitimate noncommercial or fair use. Although Complaint failed to provide specific evidence to support its claims that the disputed domain name is being used to sell counterfeit goods bearing Complainant’s PUMA Mark beyond its bald assertion to that effect, the Panel was able to independently confirm that the website to which the disputed domain name resolves sells products bearing Complainant’s Mark at deeply discounted prices. This, together with Respondent’s failure to submit arguments or evidence to rebut Complainant’s assertion that Respondent was not authorized to use Complainant’s Mark, is sufficient for this Panel to conclude that Respondent is, in all likelihood, selling counterfeited goods. This activity cannot confer any rights or legitimate interests in the disputed domain name to Respondent. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Panel finds that the disputed domain name was registered in bad faith. Complainant provided sufficient evidence to show the widespread use and numerous registrations of the PUMA Mark that long predate Respondent’s registration of the disputed domain name. Furthermore, Complainant provided evidence of an international registration it owns for the PUMA Mark designating Armenia that was in force when the disputed domain name was registered. Therefore, Respondent was likely aware of the PUMA Mark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. The Panel also finds that the disputed domain name is being used in bad faith. Despite Complainant’s minimalistic arguments and lack of substantial supporting evidence regarding Respondent’s bad faith, the Panel, as previously noted, was able to confirm that Respondent is using the disputed domain name to sell goods bearing Complainant’s Mark at deeply discounted prices without Complainant’s apparent authorization, license or permission. Therefore, Respondent is, in all likelihood, using the disputed domain name to sell counterfeit goods, which is manifestly considered evidence of bad faith behavior. WIPO Overview 3.0, section 3.1.4. Therefore, Respondent’s registration and use of the disputed domain name not only clearly indicate full knowledge of the PUMA Mark, but also an attempt to misleadingly divert consumers for Respondent’s own commercial gain through its use of the disputed domain name containing the PUMA Mark. See Policy, paragraph 4(b)(iv). For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were 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 disputed domain name, Brian J. Winterfeldt
Sole Panelist
Date: September 23, 2020
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