The Complainant is PUMA SE, Germany, represented by RNA IP Attorneys, India.
The Respondent is Rajesh Vaidya, Hitech Point Technologies, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2021, the Registrar transmitted by email 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 June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2021. The Center appointed Evan D. Brown as the sole panelist in this matter on June 30, 2021. 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 operates in the sporting goods and sporting apparel space, designing, developing, selling and marketing footwear, apparel, accessories and other products. It has used the mark PUMA since at least as early as 1948, and owns a number of registrations for that mark and similar variations around the world. For example, the Complainant owns Indian trademark registration number 323053/18 for the word mark PUMA, registered on February 15, 1977. The disputed domain name was registered on December 29, 2012. As of the filing of the Complaint, the Respondent was using the disputed domain name to publish a web page that advertises a device and related services used to prevent automobile theft. At the time of the decision, the disputed domain name does not resolve to an active website. The Complainant has also initiated civil litigation proceedings against the Respondent in the Hon’ble High Court of Delhi (CS (Comm) 137/2021) and has been successful in obtaining ex-parte injunction order against the Respondent. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is 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 respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the PUMA mark by providing evidence of its trademark registrations. The disputed domain name incorporates the PUMA mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The Panel finds that the Complainant has established this first element under the Policy. B. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. On this point, the Complainant asserts, among other things, that: - The Complainant has not licensed or otherwise given consent to the Respondent to use or commercially exploit the PUMA mark. - The Respondent was aware of the Complainant’s prior rights in the PUMA mark at the time of registration of the disputed domain name. - There is no credible legitimate reason for the Respondent to have chosen the disputed domain name. Instead, according to the Complainant, the Respondent’s purpose in choosing the disputed domain name was plainly to use fame of the Complainant’s PUMA mark to generate web-traffic and to confuse Internet users who might be looking for the Complainant and its products. - The PUMA mark as used by the Respondents infringes upon the trademark rights of the Complainant, and accordingly, the Respondent is not engaged in a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has established its prima facie case and the Respondent has not provided any evidence to rebut the presumption created by these assertions. Accordingly, the Panel finds that the Complainant has prevailed on this second element of the Policy. C. Registered and Used in Bad Faith The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt 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 or location or a product or service on [the respondent’s] website or location”. The Panel finds, based on the available record, that the Respondent registered and is using the disputed domain name in bad faith. Given how well known the Complainant’s PUMA mark is, it is not plausible to believe that the Respondent was not aware of the Complainant’s rights, when the Respondent registered and began using the disputed domain name. The Complainant has asserted that the Respondent targeted the Complainant and its mark. The Respondent has not offered facts to contradict these assertions. Accordingly, the Panel finds that the Complainant has succeeded in establishing this third UDRP element. 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 Evan D. Brown
Sole Panelist
Date: July 14, 2021
Full & Egal Universal Law Academy