The Complainant is Puma SE, Germany, represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, Germany.
The Respondent is Web Commerce Communications Limited, Malaysia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2021, 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 mentioned in the Complaint. The Center sent an email communication to the Complainant on October 22, 2021, 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 October 22, 2021.
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 November 4, 2021. In accordance with the Rules, paragraph 5, the due date for submitting a Response was November 24, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 29, 2021.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 13, 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 BackgroundThe Complainant is a German company that carries out its activities in the sportswear industry.
The Complainant is the owner of several trademark registrations around the world, among others, the following:
Trademark No. Registration Jurisdiction Date of RegistrationPUMA
369917
International Registration
May 29, 1970
PUMA
1611030
International Registration
November 19, 2020
PUMA
584679
International Registration
March 28, 1993
PUMA
480708
International Registration
September 30, 1983
The Respondent registered the disputed domain name on June 16, 2021; it resolves to a website that operates an online store that allegedly offers counterfeits of the Complainant’s products.
5. Parties’ Contentions A. ComplainantThe Complainant argued the following:
I. Identical or Confusingly Similar
That the disputed domain name is based on the Complainant’s trademark PUMA, which is registered worldwide for different goods and services, in several classes.
That the first part of the disputed domain name is identical to the Complainant’s trademark PUMA. That the word “Argentina” is merely descriptive.
II. Rights or Legitimate Interests
That there is no evidence that the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services. That, in contrast, the disputed domain name is being used to offer for sale fake goods.
That the Respondent has not been commonly known by the disputed domain name.
That, because of the confusion created among consumers, the Respondent cannot be deemed as commonly known by the disputed domain name.
That the disputed domain name infringes the Complainant’s trademarks. That the Respondent sells fake goods and illegally uses the Complainant’s trademarks. That, therefore, the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name.
That the Respondent has used the disputed domain name for commercial gain, misleadingly, to divert consumers or to tarnish the Complainant’s trademarks.
III. Registered and Used in Bad Faith
That the Respondent has registered and uses the disputed domain name in bad faith, which renders it impossible for the Complainant to claim any rights regarding the disputed domain name.
That, by using the disputed domain name, the Respondent attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and the products sold therein.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
(ii) the 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.
Given the Respondent’s failure to submit a formal Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules, (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292, and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487).
A. Identical or Confusingly SimilarThe Complainant has proven to be the owner of international registrations for the trademark PUMA, to protect several products and services in different classes.
The disputed domain name
The incorporation of the geographical term “Argentina” does not prevent a finding of confusing similarity, because the Complainant’s trademark PUMA is recognizable in the disputed domain name (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”; see also Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; InfoSpace.com, Inc. v. Hari Prakash,WIPO Case No. D2000-0076; AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553; and Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours,WIPO Case No. D2004-0388).
The addition of a hyphen, between the trademark PUMA and the geographical term “Argentina” is irrelevant for the purpose of assessing confusing similarity (see section 1.9 of the WIPO Overview 3.0; see also Rolls-Royce plc v. John Holt.,WIPO Case No. D2017-1842; Mastercard Prepaid Management Services Limited v. Cash SDSD.,WIPO Case No. D2020-1938; and ZB, N.A., a national banking association, dba Zions First National Bank v. Sharon White, WIPO Case No. D2017-1769).
The inclusion of the generic Top-Level Domain “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Therefore, it has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).
In light of the above, the first element of the Policy has been met.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 disputed domain name, even if it did not acquire 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.
The Complainant has asserted 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, and that the Respondent has not been commonly known by the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272, and Autodesk, Inc. v. Brian Byrne, meshIP, LLC WIPO Case No. D2017-0191). The Respondent did not contest these allegations.
The website to which the disputed domain name resolves predominantly displays the Complainant’s PUMA trademark, as well as reproductions of images of the Complainant’s official products. This shows that the Respondent has attempted to impersonate the Complainant. In addition, the Panel notes that the along with the construction of the disputed domain name, the composition of the website to which the disputed domain name resolves carries a risk of implied affiliation, since Internet users may think that said website is operated by a local official distributor of the Complainant in Argentina, since such website contains a series of captions that may lead consumers into confusion, such as “Tienda Puma Argentina Online-Zapatillas Puma Outlet 2021”, “envíos gratis…” (“Argentina Online Puma Store-Puma Sneakers Outlet 2021”) (see sections 2.5.1, and 2.13.1 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly,WIPO Case No. D2019-0283). Rather than clarify the relationship, or lack thereof, to the Complainant, the content of the website reinforces association to the Complainant, contrary to the fact, which cannot constitute fair use.
Additionally, the Complainant has asserted that the Respondent uses the website to which the disputed domain name resolves to sell counterfeited products, which affirmation was not challenged by the Respondent. While panels are generally not prepared however to accept merely conclusory allegations of illegal activity, including counterfeiting, the Panel notes circumstantially that the disputed domain name offers the Complainant’s products well-below market value and for incoherent prices (e.g., USD 9.164) and that the disputed domain name likely misappropriates the Complainant’s copyrighted images. See section 2.13.2 of the WIPO Overview 3.0.
The consensus view among UDRP panels appointed under the Policy is that the use of a domain name for illegal activity, such as the sale of counterfeits, impersonation, or passing off, cannot confer rights to, or legitimate interests in a domain name (see section 2.13.1 of the WIPO Overview 3.0, see also Richemont International SA v. brandon gill, WIPO Case No. D2013-0037, and Philipp Plein v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Norma Brandon, cheapphilipppleinWIPO Case No. D2015-1050).
In light of the above, the Complainant made a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant’s assertions.
Therefore, the second element of the Policy has been fulfilled.
C. Registered and Used in Bad FaithAccording to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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 web site or location or of a product or service on its web site or location.
Considering the intensive investments in advertising that the Complainant has undertaken, and the reputation that the trademark PUMA enjoys internationally, it is safe to infer that said trademark is well known.
The fact that the Respondent registered the disputed domain name which entirely reproduces the Complainant’s well-known trademark PUMA, shows that the Respondent has targeted the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk,WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye,WIPO Case No. D2016-1747).
Previous UDRP panels appointed under the Policy have found that the mere registration by an unauthorized party of a domain name that is identical to a well-known trademark, can constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0; see also Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882). This is so in the present case.
The facts comprised in the case file also show that the Respondent has intentionally used the disputed domain name to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating the impression among Internet users that said website is related to, associated with, or endorsed by the Complainant, which conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0.; see also trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014-0365; and Jupiter Investment Management Group Limited v. N/A, Robert Johnson,WIPO Case No. D2010-0260).
As noted in the discussion of the second element of the Policy, the impersonation of the Complainant carried out by the Respondent also constitutes bad faith (see Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi,WIPO Case No. D2019-0466; Self-Portrait IP Limited v. Franklin Kelly, supra; and Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC, WIPO Case No. D2016-0800).
In light of the above, the third element of the Policy has been met.
7. DecisionFor 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
Kiyoshi Tsuru
Sole Panelist
Date: December 27, 2021