ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Reebok International Limited v. Client Care, Web Commerce Communications Limited Case No. D2023-0517 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 Name and Registrar The disputed domain name is 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 name. On February 7, 2023, 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 (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 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 7, 2023. page 2 The Center appointed Ahmet Akgüloğlu as the sole panelist in this matter on March 31, 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, Reebok International Limited, is a global company that manufactures and sells sports shoes and sports apparel and is one of the leading and well-established companies in the industry. The Complainant owns registered trademarks in several countries, including the Philippines. Registration Number 4-1993-085482 and Registration Number 50376, are some of Reebok's registered trademarks in the Philippines. The disputed domain name resolves to a webpage that seems to display the Complainant's products with a 50 percent discount. The Disputed Domain Name was registered on January 11, 2023. 5. Parties' Contentions A. Complainant (a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The Complainant argued that there was a likelihood of confusion, in respect of the world-famous REEBOK brand and the associated domain name. The Complainant submitted that the public has mistakenly associated the disputed domain name with the trademark REEBOK. Considering there is no filed trademark application under Respondent's records and the Complainant has over 2,000 registered REEBOK trademarks, the incorporation of that trademark into a domain name is likely to mislead consumers into believing there was a connection with the Complainant. The Complainant also asserted that the only additional elements to the disputed domain name were the usual "www." prefix, geographic identifier "Philippines", the descriptive term "shoes" and the generic suffix ".com". Therefore, the Complainant argues the usage of mentioned terms is not sufficient to distinguish the Complainant's mark and the disputed domain name. (b) The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant denoted that Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in terms of REEBOK trademarks or domain names. Additionally, there is no solid indication that the Respondent has been using REEBOK trademarks for a bona fide offering of goods or services. The Complainant asserted that the Respondent has been using REEBO" trademarks to promote its website and commercially profit by offering fake REEBOK website and counterfeit products. The Respondent's sole intention in registering the disputed domain name is to trick consumers into inadvertently believing that the Complainant is affiliated with Respondent's website and boosting its commercial activities. Therefore, the Complainant affirms that the Respondent's use of REEBOK trademark is not in connection with bona fide, it is not known with the disputed domain name and it is not practicing fair commercial activity in terms of domain name use. (c) The domain name was registered and is being used in bad faith. The Complainant contends that the Respondent was fully aware of the Complainant's well-known trademark at the time of domain name registration. In connection with well-known trademark, the Complainant argues that a simple Google research would have easily disclosed registered REEBOK trademark and business page 3 activities, and points out this specific situation as proof of bad faith. In addition, the Complainant argues that the time of registration proves the bad faith of the Respondent and references Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415, case as a precedent for the gap of several years between domain name and trademark registration being in bad faith. The Complainant also contends that the Respondent has been using a privacy shield to hide its identity and therefore, made it impossible for Complainant to contact the Respondent and settle the dispute. The Complainant argues that the Respondent has been actively trying to mimic the official website of the Complainant, and trying to create the illusion of sponsorship, affiliation and endorsement. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings The following three conditions must be met for a decision to transfer a domain according to paragraph 4(a): (i) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. The Panel notes the guidance at paragraph 14(a) of the Rules: "In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint". A. Identical or Confusingly Similar The Complainant has proved that it has rights to the REEBOK trademark. The assessment of confusing similarity will be between a trademark and a domain name. The disputed domain name is composed of the words "reebok", "philippines" and "shoes". "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements." See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.8. For the reasons explained above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks as required by the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The evidence presented demonstrates that the Complainant is the owner of multiple well-known REEBOK trademarks used in disputed domain name. There is no evidence that the Respondent has any authorization, license or permit to use Complainant's registered trademarks. Even though the overall burden of proof is on the Complainant in domain name disputes (Section 2.1 of WIPO Overview 3.0), panels recognize the impossibility of "proving a negative". Hence, where a complainant presents a prima facie case that the respondent lacks rights or legitimate interests in a domain name, the burden of production transfers to the respondent in order to come forward with relevant documentation, which proves the respondent's legitimate rights. (See NUTREXPA, S.A. v. Juan Silher, page 4 WIPO Case No. D2000-1386 and Ritual Beverage Company LLC v. Tom Tom, Tom Tom S. DE R.L. DE C.V., WIPO Case No. D2021-3643). Here, the Respondent has not submitted any response to the Complaint. There is no evidence that the Respondent's domain name activity constitutes fair use, or that the Respondent is making legitimate noncommercial use of the disputed domain name. Additionally, the Respondent has failed to provide evidence of any Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with any bona fide offering of goods or services. On the contrary, the Complainant's evidence (Annex 5 of the Complaint) demonstrates that the Respondent has been using the REEBOK trademark to deceive consumers by presenting to what appears likely counterfeit products on the disputed domain name website that resembles the Complainant's original "www.reebok.com" website. Based on the facts presented in the Complaint, the Panel determines that the use of the disputed domain name, which integrates the Complainant's trademark and implies an affiliation with the Complainant, does not correspond to legitimate use of the disputed domain name under the Policy. For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The trademark REEBOK is registered by the Complainant in several jurisdictions and well-known. The registration of the disputed domain name by the Respondent was on January 11, 2023, many years after the first REEBOK trademark registrations. See PJ Hungary Szolgáltató Korlátolt Felelösségü Társaság v. Web Commerce Communications Limited, Client Care, WIPO Case No. D2022-1345; LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling, WIPO Case No. D2008-0226). Furthermore, given that the disputed domain name is used to impersonate the Complainant and advertises the Complainant's goods (at a 50 percent discount), it is clear that the Respondent knew about the Complainant and registered the disputed domain name with the intention of targeting the Complainant. Regarding the use of privacy shield, the Panel considers that hiding identity and contact information may suggest bad faith (see Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533; Section 3.6 of WIPO Overview 3.0). This concept applies to the present case, as the Respondent registered the disputed domain name through a privacy shield service. The lack of response by the Respondent further indicates that the disputed domain name was, more likely than not, registered in bad faith. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith. 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. /Ahmet Akgüloğlu/ Ahmet Akgüloğlu Sole Panelist Date: April 14, 2023
Full & Egal Universal Law Academy