The Complainant is Puma SE, Germany, represented by Göhmann Rechtsanwälte, Germany.
The Respondent is Wang Nan, China. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2020. On September 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 9, 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 the Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 2020, 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 amendment to the Complaint on September 15, 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 the Respondent of the Complaint, and the proceedings commenced on September 16, 2020. I n accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2020. The Center appointed Palazzi, Pablo A. as the sole panelist in this matter on October 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 The Complainant is a company organized under the laws of Germany that belongs to the world’s leading producers of sports articles. The Complainant has provided evidence that it is the owner of numerous trademarks worldwide relating to the term “Puma”, including, among other the following trademarks registrations: - PUMA International Trademark Registration No. 482069, registered on January 4, 1984; The Respondent registered the Disputed Domain Name The Complainant contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Name is identical to the Complainant’s PUMA trademark. The addition of the term “outlets” could be understood as information that products and especially products at reduced prices are for sale, being a descriptive and not a distinctive term. Rights or legitimate interest The Complainant alleges that there is no evidence of the Respondent’s use of the Disputed Domain name in connection with a bona fide offering of goods or services. The Complainant further states that although the website linked to the Disputed Domain Name is no longer available, fake products were previously offered for sale in the Disputed Domain Name. Moreover, the Respondent has not been commonly known by the Disputed Domain Name. Finally, the Complainant contends that the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name. The Respondent intends to use the Disputed Domain Name for commercial gain misleading to divert consumers or to tarnish the Complainant’s trademark. Registration and use in bad faith The Complainant alleges that the Respondent registered and uses the Disputed Domain Name in bad faith. Thus, the Respondent cannot claim any rights with respect to the Disputed Domain Name. Finally, the Complainant states that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case: “(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar Based on the evidence submitted, this Panel finds that the Disputed Domain Name The Disputed Domain Name only differs from the Complainant’s trademark with the addition of the dictionary term “outlets”. The addition of such term does not prevent a finding of confusing similarity with the Complainant’s trademark. Moreover, the addition of the Top-Level Domain (“TLD”) “.com” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: “(i) before any notice to you of the dispute, your use of, 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 at issue.” There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the PUMA trademark. The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions. As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Complainant has used its trademarks long before the Disputed Domain Name was registered. The Complaint´s trademarks are well-known as it has been recognized by previous decisions under the Policy (See, Puma SE v. Bridgette Limones, WIPO Case No. D2019-0818; Puma SE v. Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2019-1114 and Puma SE v. Rachel P. Rayner, Nedick’s, WIPO Case No. D2019-0768,). In light of this, the Respondent had evidently knowledge of the Complainant’s PUMA trademark when it registered the Disputed Domain Name. The addition of the dictionary term “outlets” to the well-known trademark PUMA in the Disputed Domain Name is evidence of this. The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has intentionally created likelihood confusion with the Complainant’s trademarks in order to attract Internet users for his own commercial gain. The Disputed Domain Name In the case at hand, in view of the Respondent’s registration of a domain name confusingly similar to the Complainant’s well known trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the Disputed Domain Name also amounts to bad faith. In light of the Complainant’s claim that fake products were previously offered for sale on the website related to the Disputed Domain Name, the Panel finds also that the Respondent has used the Disputed Domain Name to intentionally created likelihood confusion with the Complainant’s PUMA trademark in order to attract Internets users for his own commercial gain, as required by paragraph 4(b)(iv) of the Policy. Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and using the Disputed Domain Name 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 Pablo A. Palazzi
- PUMA International Trademark Registration No. 437626, registered on April 12, 1978; and
- PUMA International Trademark Registration No. 480511, registered on October 21, 1983.
Sole Panelist
Date: October 13, 2020
Full & Egal Universal Law Academy