ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Reebok International Limited v. Client Care, Web Commerce Communications Limited Case No. D2022-2523 1. The Parties The Complainant is Reebok International Limited, United States of America ("United States" or "US"), represented by Authentic Brands Group, United States. The Respondent is Client Care, Web Commerce Communications Limited, Malaysia. 2. The Domain Names and Registrar The disputed domain names , , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2022. On July 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 14, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 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 July 20, 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 31, 2022. The Center appointed Federica Togo as the sole panelist in this matter on September 19, 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. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. This is the case in the present proceedings. 4. Factual Background The Complainant is the registered owner of many trademark registrations worldwide for REEBOK, e.g., US trademark registration No. 1133704 REEBOK registered on April 22, 1980 for "Shoes for use in athletic sports" in class 25 (this mark has been duly renewed and is in force); US trademark registration No. 5530372 REEBOK registered on July 31, 2018 for "Apparel, namely, bra tops, jackets, wrist bands, headbands, warm-up suits, pants, athletic uniforms, gloves, and infant wear, namely, footwear" in class 25. According to the publicly available WhoIs information, the disputed domain names were registered on May 24, 2022. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain names resolve to websites displaying without any authorization the Complainant's trademarks and logo and allegedly selling the Complainant's shoes under the Complainant's trademarks. 5. Parties' Contentions A. Complainant It results from the Complainant's undisputed allegations that the Complainant is currently, and for many years has been, one of the world's leading manufacturers of athletic footwear, apparel and sport, exercise and fitness equipment, and has advertised, marketed, promoted, distributed and sold such worldwide under its REEBOK trademark. It began using its REEBOK trademark for footwear at least as early as 1965 and expanded its use for apparel at least as early as 1985, and for sporting equipment as least as early as 1988. In the 1980s, it also began using the REEBOK trademark in connection with fitness instruction, and health and fitness club services. The Complainant contends that its trademark REEBOK is well known all over the world. The Complainant further contends that the disputed domain names are identical or confusingly similar to its trademark REEBOK, since they consist of the misspelling of its trademark, followed by: a) the descriptive term "shoes" and the geographic identifier "Sydney"; b) the descriptive term "shoes" and the geographic identifier "Ireland"; c) the descriptive terms "shoes" and "outlet"; d) the geographic identifier "New Zealand"; e) the geographic identifier "Netherlands"; f) the geographic identifier "Belgium"; g) the geographic identifier "Ireland"; and h) the Polish term "buty" which translates "shoes", and the generic suffix ".com". On this regards, the misspelled trademark does not prevent a finding of confusing similarity, and the additional elements incorporated in the disputed domain names that are generic terms, descriptive terms, numbers, and/or abbreviations, are not sufficiently distinctive or unique as to dispel a likelihood of consumer confusion. Finally, the fact that the Respondent is using descriptive terms which describe the Complainant's goods (e.g., shoes) only increases the likelihood that consumers would be confused. page 3 The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use its trademark or to apply for any domain names incorporating the REEBOK trademark. On the contrary the Respondent has been actively using the Complainant's trademarks in the disputed domain names to promote its websites for illegitimate commercial gain, more specifically, by operating a fake Reebok website offering counterfeit Reebok goods. Such unauthorized use of the Complainant's trademarks is likely to trick consumers into erroneously believing that the Complainant is somehow affiliated with the Respondent or endorsing its commercial activities while in fact, no such relationship exists. Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, the Respondent was aware of the Complainant's trademarks at the time it registered the disputed domain names, since the Complainant's trademarks are well known around the world. Additionally, the Respondent used a privacy shield to mask its identity, which made it difficult for the Complainant to contact the Respondent and amicably settle a domain dispute. Finally, the Respondent seems to be selling counterfeit Reebok goods on its websites; the Respondent has no reason to use the Complainant's mark in the disputed domain names other than to attract Internet users to its sites for commercial gain, especially since the Complainant's site is "www.reebok.com". B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain names be transferred or cancelled: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the mark REEBOK. Reference is made in particular to US trademark registration No. 1133704 REEBOK registered on April 22, 1980 for "Shoes for use in athletic sports" in class 25 (this mark has been duly renewed and is in force); US trademark registration no. 5530372 REEBOK registered on July 31, 2018 for "Apparel, namely, bra tops, jackets, wrist bands, headbands, warm-up suits, pants, athletic uniforms, gloves, and infant wear, namely, footwear" in class 25. page 4 The eight disputed domain names are all composed by the term "rebok", which is almost an identical reproduction of the Complainant's trademark REEBOK, the only difference between the term and mark being that the second vocal "e" is missing in the disputed domain names. This Panel emphasizes that the case at hand is a typical case of "typosquatting", which occurs when a domain name consists of a misspelling of the complainant's trademark. According to the consensus view of UDRP panels, a domain name which consists of a common, obvious, or intentional misspelling of a trademark normally is found to be confusingly similar to such trademark, where the domain name contains sufficiently recognizable aspects of the relevant mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 1.9. In addition, the term "rebok" is followed in the disputed domain names by different terms: i.e., "belgium", "buty", "ireland", "netherlands", "newzealand", "shoesireland", "shoesoutlet", and "shoessydney" respectively. It is the view of this Panel that the addition of these terms in the disputed domain names respectively cannot prevent a finding of confusing similarity between the disputed domain names and the Complainant's trademark, since the Complainant's trademark is sufficiently recognizable in the disputed domain names (see WIPO Overview 3.0 at section 1.8). Finally, the generic Top-Level Domain ("gTLD") ".com" of the disputed domain names may be disregarded under the first element confusing similarity test (see WIPO Overview 3.0 at section 1.11.1). In the light of the above, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain names. According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent's use of the trademark REEBOK, e.g., by registering the disputed domain names which are confusingly similar with the Complainant's trademark. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain names in the sense of paragraph 4(c)(ii) of the Policy. Moreover, the Panel notes that the trademark REEBOK is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain names with the intention to take advantage of the Complainant's trademark and trade name by attracting Internet users for commercial gain (e.g., Sodexo v. A Jackson, WIPO Case No. D2021-2774; Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-0886; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847). page 5 It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0 at section 2.1). Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites or locations or of a product or service on its websites or locations (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand. It results from the Complainant's documented allegations that the disputed domain names resolve to websites displaying without authorization the Complainant's trademarks and logo, and allegedly selling Complainant's shoes under the Complainant's trademarks. For the Panel, it is therefore evident that the Respondent positively knew the Complainant's marks. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain names were confusingly similar to the Complainant's trademark when it registered the disputed domain names. In addition, the Panel shares the view of other UDRP panels (see, e.g., Reebok International Limited v. Web Commerce Communications Limited, Client Care, WIPO Case No. D2022-2738) and finds that the Complainant's trademark REEBOK is well known. Therefore, this Panel has no doubt that the Respondent positively knew or should have known the Complainant's trademark when registered the disputed domain names. Registration of the disputed domain names in awareness of the reputed REEBOK mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955). Finally, the further circumstances surrounding the disputed domain names' registration and use confirm the findings that the Respondent has registered and is using the disputed domain names in bad faith (see WIPO Overview 3.0 at section 3.2.1): (i) the nature of the disputed domain names (i.e., domain names consisting of a typo of a widely-known mark plus the addition of different terms); (ii) the content of the websites to which the disputed domain names direct, displaying the Complainant's trademarks and logo, and allegedly offering for sale the Complainant's shoes under the Complainant's trademarks; (iii) a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the disputed domain names; (iv) the Respondent did not provide any response with conceivable explanation of its behavior. In the light of the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. page 6 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 names, , , , , , , , and be transferred to the Complainant. /Federica Togo/ Federica Togo Sole Panelist Date: October 3, 2022
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