ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Reebok International Limited v. Client Care, Web Commerce Communications Limited Case No. D2023-0514 1. The Parties The Complainant is Reebok International Limited, United States of America, represented by Authentic Brands Group, United States of America. 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 February 3, 2023. On February 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 3, 2023, 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 (John Doe) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 7, 2023, 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 February 7, 2023. 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 February 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 21, 2023. page 2 The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on April 12, 2023. 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 Reebok International Limited, a manufacturer of athletic footwear, apparel and sport, exercise and fitness equipment known worldwide. The Complainant has advertised, marketed, promoted, distributed, and sold such products all over the world under the trademark REEBOK, at least since 1965. The REEBOK brand is supported by a vast portfolio of intellectual property rights, including a global portfolio of more than 2,000 trademarks covering a wide variety of goods and services and a large portfolio of copyright for images used in association with the advertising, marketing, and sale of REEBOK-branded products globally. Among the thousands of registrations obtained by the Complainant for its mark REEBOK, it is worth mentioning the following ones: - Registration No. 891547 in Classes 14, 25 and 28 for REEBOK, in Chile, as seen in Annex 4.1; - Registration No. 1058785 in Class 18 for REEBOK vector logo in Chile, as shown in Annex 4.2; - Registration No. 206391 in Class 25 for REEBOK in Colombia, shown in Annex 4.3; and - Registration No. 246835 in Class 25 for "REEBOK vector logo in Colombia, as seen in Annex 4.4. The Disputed Domain Names were registered on January 8, 2023 (Annex 1 to the Complaint). They resolve to a website that offers counterfeited REEBOK products (Annex 5 to the Complaint). 5. Parties' Contentions A. Complainant The Complainant states that both Disputed Domain Names are identical or confusingly similar to the Complainant's Trademark. The Complainant's Trademark is reproduced in its entirety in both Disputed Domain Names, and the terms chosen by the Respondent to compose the Disputed Domain Name together with REEBOK are "Chile", "Colombia", and "outlet". The country names does not negate the confusing similarity between the Disputed Domain Names and the Complainant's trademark. The Complainant owns several registrations worldwide for the trademark REEBOK, particularly in those countries which names were inadvertently used in both Disputed Domain Names, as evidence by Annexes 4 to the Complaint. Also, evidence of the renown of the mark REEBOK and its several uses online was produced in Annexes of the Complaint. The Disputed Domain Names adopted by the Respondent - a reproduction of the Complainant's registered mark associated with descriptive additions - show a clear intention of misleading the Internet users. In addition, by using the Disputed Domain Names in connection with a website that falsely appears to be a website for, or otherwise associated with, the Complainant - and by offering counterfeited REEBOK goods (Annex 5 of the Complaint) - the Respondent has failed to create a bona fide offering of goods or services. page 3 In sum, the Complainant alleges that the registration and use of the Disputed Domain Name is intentional to mislead Internet users, that it is clear that the Respondent has no rights or legitimate interests in the Disputed Domain Names, and that the Disputed Domain Name were registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are: i. the disputed domain name is 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 to the disputed domain name; and iii. the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Disputed Domain Names are, indeed, confusingly similar to the REEBOK trademark, as the latter is entirely incorporated in the Disputed Domain Names. The Complainant has presented consistent evidence of ownership of the trademark REEBOK in jurisdictions throughout the world, by presenting a substantial number of registrations for them, as well as comprehensive evidence of the use of the trademark. The use of the trademark with the geographical terms "Chile" and "Colombia", as well as with the term "outlet" in the Disputed Domain Names does not prevent a finding of confusing similarity with the trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Given the above, the Panel concludes that the Disputed Domain Names are confusingly similar to the registered trademark of the Complainant. B. Rights or Legitimate Interests Given the clear evidence that the trademark REEBOK is registered in the name of the Complainant and is widely known as identifying the Complainant's activities, and that the Complainant has not licensed this to the Respondent, the Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. In the absence of a Response, the Respondent has not rebutted such prima facie case. Furthermore, the Respondent does not appear to be commonly known by the Disputed Domain Names. It has also been shown that the Disputed Domain Names resolve to websites similar to the Complainant's, offering for sale several goods under the mark REEBOK. The goods offered for sale on the websites are suspected to be counterfeit products of the Complainant's genuine REEBOK products, and seek to take unfair advantage of the Complainant's Trademark and reputation. While no evidence has been presented to support the allegedly counterfeit nature of the goods offered, the Panel need not come to a determination on the nature of the goods. Given that the composition of the Disputed Domain Names carry a risk of implied page 4 affiliation to the Complainant that is reinforced by the impersonating nature of the content at the websites to which the Disputed Domain Names resolve, neither of which include any information about their relationship (or lack thereof) to the Complainant, the Disputed Domain names fail the so-called "Oki Data test" enshrined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Respondent is not making a bona fide offering. WIPO Overview 3.0, section 2.8. The Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. In the absence of a Response, the Respondent has not rebutted such prima facie case. The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith Given the circumstances of this case, the facts outlined in sections A and B above can also evidence the Respondent's bad faith in the registration and use of the Disputed Domain Names. The Respondent intended to give an overall impression that the Disputed Domain Names are associated with the Complainant, and the Panel accepts that the Disputed Domain Names may be intended to capitalize on the fame and goodwill of the Complainant's trademarks. The fact that the Disputed Domain Names resolve to websites offering for sale allegedly counterfeited goods supports a finding of bad faith in these circumstances. Ultimately, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Disputed Domain Names, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Names, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant when registering the Disputed Domain Names and that the Respondent registered and is using the Disputed Domain Names in bad faith. The Panel finds that the Complainant has also proved the third element of the Policy. 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. /Alvaro Loureiro Oliveira/ Alvaro Loureiro Oliveira Sole Panelist Date: May 1, 2023
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