ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Reebok International Limited v. Client Care, Web Commerce Communications Limited Case No. D2023-0518 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 (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 and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, 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 the same day. 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 8, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 1, 2023. page 2 The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 7, 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 a manufacturer of athletic footwear, apparel and sport, exercise and fitness equipment, and has advertised, marketed, promoted, distributed and sold such products worldwide under the brand "REEBOK" since as early as 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. In Argentina, the Complaint owns a number of trademark registrations in Class 25 relating to the REEBOK brand including, inter alia, Registration No. 3165419 for the vector design " " registered on November 7, 2019, Registration No. 2679928 for the stylized mark " " registered on February 20, 2014, and Registration No. 2980455 for "REEBOK" registered on January 16, 2018 (altogether, the "REEBOK Trademarks"). The REEBOK Trademark for "REEBOK" ("Complainant's Trademark") is fully incorporated in the domain name which resolves to its official website "www.reebok.com". The Disputed Domain Name was registered by the Respondent using the anonymous registration services of the Registrar on October 7, 2022. The Disputed Domain Name resolves to a webpage "reebokargentina.com" (the "Website") offering purported REEBOK products. 5. Parties' Contentions A. Complainant The Complainant's primary contentions can be summarized as follows: (a) The Disputed Domain Name is identical or confusingly similar to the Complainant's Trademark. The Complainant's Trademark is reproduced in its entirety in the Disputed Domain Name. Apart from the Complainant's Trademark, the only element in the Disputed Domain Name is the geographical term "Argentina". (b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not obtained any authorization from the Complainant to use the Complainant's Trademark as part of a domain name or otherwise. Furthermore, the Complainant believes that the Respondent has been actively using the Complainant's Trademark to deceive consumers into believing that the Complainant is affiliated with the Respondent or endorsing its commercial activities, in order to promote suspected counterfeit REEBOK products on the Website. Such use of the Disputed Domain Name cannot be considered as legitimate noncommercial or fair use without the intent for commercial gain. (c) Both the Respondent's registration of and its use of the Disputed Domain Name establish the Respondent's bad faith. Given the goodwill and reputation that the Complainant has acquired in the Complainant's Trademark, the Respondent must have been fully aware of the existence of the Complainant's rights in the Complainant's Trademark when the Respondent registered and used the Disputed Domain Name. The Respondent used a privacy shield to mask its identity. The Respondent attempted to pass off the Disputed Domain Name as the Complainant's website to attract Internet users to the Website for the sale of competing and unauthorized goods and to disrupt the Complainant's business by virtue of the association between the Disputed Domain Name and the Complainant's Trademark. Therefore, page 3 the Respondent has registered and is using the Disputed Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (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 of the Disputed Domain Name; and (iii) The Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the Complainant's Trademark based on various trademark registrations listed above in Section 4. It is well established that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the addition of a geographical term would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The Disputed Domain Name incorporates the Complainant's Trademark in its entirety with the addition of the geographical term "Argentina" at the end of the Complainant's Trademark. The Panel therefore finds that the mere addition of such geographical term is not sufficient to prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant's Trademark. As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's Trademark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorized the Respondent to use the Complainant's Trademark. There is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the Complainant's Trademark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit a formal Response. The fact that the Respondent did not submit a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent's failure to file a formal Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing page 4 from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) Before any notice to him of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) The Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or (iii) The Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel agrees with the Complainant that there is no evidence to show that the Respondent has trademark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name. There is no evidence to suggest that the Respondent's use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name, is in connection with a bona fide offering of goods or services. The goods offered for sale on the Website, while clearly unauthorized by the Complainant, 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 (see Prada S.A. v. Chen Mingjie, WIPO Case No. D2015-1466; Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747). Even if the goods were genuine REEBOK products, the Website does not display any disclaimer of a lack of relationship between the Complainant and the Respondent. Accordingly, the Panel agrees with the Complainant that the Respondent's use of the Disputed Domain Name cannot constitute a bona fide offering of goods, or be regarded as legitimate noncommercial or fair use. In particular, the Respondent would likely not have adopted the Complainant's Trademark, if not for the purpose of creating an impression that the Website and the goods offered on the Website are associated with the Complainant, or otherwise taking advantage of the goodwill and reputation in the Complainant's Trademark. In this regard, the Panel also notes the nature of the Disputed Domain Name, which incorporates the Complainant's Trademark in its entirety with the addition of the geographical term "Argentina" where the Complainant operates, tends to suggest sponsorship or endorsement by the Complainant. See Section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trademark by an unaffiliated entity can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. After reviewing the supporting evidence submitted by the Complainant, the Panel agrees with the Complainant that the Complainant's Trademark appears to be well known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword "Reebok" are the Complainant's websites and third-party websites providing information about the Complainant and/or its products. Therefore, the Panel agrees that the Respondent must have been aware of the Complainant and its rights in the Complainant's Trademark when registering and using the Disputed Domain Name. page 5 The Panel also agrees with the Complainant that the following factors support a finding that the Disputed Domain Name was registered and has been used by the Respondent in bad faith: (i) The Respondent registered and has been using the Disputed Domain Name to mislead and divert Internet users to the Website for commercial gain by creating a likelihood of confusion with the Complainant's Trademark as to the source, the Complainant's sponsorship, affiliation, or endorsement of the Website. See section 3.1 of the WPO Overview 3.0. (ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusingly similar to the Complainant's Trademark and that the Website has been used to sell suspected counterfeit REEBOK products. In addition to using the Complainant's Trademark in the Disputed Domain Name, the Respondent has also been using the Complainant's other REEBOK Trademarks on the Website to further associate the Website and the goods offered on the Website with the Complainant. The Respondent's use of the Disputed Domain Name for the suspected illegitimate activity of selling counterfeit products can never confer rights or legitimate interests on the Respondent (see section 3.1.4 of the WIPO Overview 3.0). (iii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193). The Panel also notes that the Respondent failed to respond to the Complainant's contentions and has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Name. This further supports a finding of bad faith registration and use of the Disputed Domain Name. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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. /Gabriela Kennedy/ Gabriela Kennedy Sole Panelist Date: March 20, 2023
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