ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Reebok International Limited v. Robert Kirk Case No. D2022-1711 1. The Parties The Complainant is Reebok International Limited, United States of America ("United States"), represented by Authentic Brands Group, United States. The Respondent is Robert Kirk, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2022. On May 11, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2022, 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 the Complainant on May 13, 2022 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 May 13, 2022. 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 May 16, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 7, 2022. page 2 The Center appointed Evan D. Brown as the sole panelist in this matter on June 22, 2022. 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 well-known purveyor of athletic apparel and gear, including shoes. It owns the trademark REEBOK which it has registered in many jurisdictions, including the United States (Reg. No. 1,133,704, registered on April 22, 1980). According to the WhoIs records, the disputed domain name was registered on March 26, 2022. The Respondent has used the disputed domain name to set up a website purporting to offer the Complainant's goods for sale. The website prominently displays the Complainant's design mark. 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 This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. 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 REEBOK mark by providing evidence of its trademark registrations. The disputed domain name incorporates the REEBOK mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The presence of the additional term "shoes" does not prevent a finding of confusing similarity. The REEBOK mark remains sufficiently recognizable for a page 3 showing of confusing similarity under the Policy. Accordingly, 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 production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). On this point, the Complainant asserts, among other things, that (1) the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the REEBOK trademark or to apply for any domain names incorporating the REEBOK trademark, nor has the Complainant acquiesced in any way to such use or application of the REEBOK trademark by the Respondent, (2) there is no evidence of fair use, (3) there is no evidence that the Respondent is using or plans to use the REEBOK trademark or the disputed domain name incorporating the REEBOK trademark for a bona fide offering of goods or services that does not infringe REEBOK's intellectual property rights. On the contrary, the Respondent is using the disputed domain name for an infringing online store, demonstrating a lack of rights or legitimate interests not without an attempt to obtain commercial gain. The Panel finds that the Complainant has made the required prima facie showing. The disputed domain name resolves to a website that reproduces the Complainant's design mark and purports to offer for sale the Complainant's products, without prominently and accurately disclosing lack of relationship between the Complainant and the Respondent. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent's favor. Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Accordingly, the Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed 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 [the respondent's] 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] website or location or a product or service on [the respondent's] website or location." The Panel finds that the Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Establishing a website to sell purportedly the Complainant's products without prominently and accurately disclosing lack of relationship between the Parties, using the disputed domain name that incorporates the Complainant's mark, is a clear example of bad faith registration and use under the Policy. Furthermore, as previously noted, the disputed domain name carries a risk of implied affiliation. Id. Accordingly, the Panel finds that the Complainant has established this third element under the Policy. page 4 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 be transferred to the Complainant. /Evan D. Brown/ Evan D. Brown Sole Panelist Date: July 6, 2022
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