ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Reebok International Limited v. ZhouRunFa Case No. D2023-2081 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 ZhouRunFa, China. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba.com Singapore ECommerce Private Limited (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2023. On May 11, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 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 June 8, 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 June 8, 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 June 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 19, 2023. The Center appointed Daniel Peña as the sole panelist in this matter on July 28, 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. page 2 4. Factual Background The Complainant manufactures athletic footwear, apparel and sport, exercise and fitness equipment. The Complainant owns the following trademarks in the Philippines: - REEBOK VECTOR DESIGN LOGO Registration No. 4-1993-085482 in Classes 18 and 25, registered on July 1, 2005. - REEBOK LOGO Registration No. 50376 in Classes 18 and 25, registered on April 30, 1991. The disputed domain name was registered on November 2, 2022. At the time of filing the Complaint, the disputed domain name resolves to a website allegedly offering the Complainant's trademarked goods at discounted prices. 5. Parties' Contentions A. Complainant The Complainant is the owner of the world-famous REEBOK brand. 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. The Complainant began using its REEBOK trademark for footwear at least as early as 1965. The Complainant expanded its use of the REEBOK trademark for apparel at least as early as 1985, and for sporting equipment at least as early as 1988. In the 1980s, the Complainant also began using the REEBOK trademark in connection with fitness instruction, and health and fitness club services. The disputed domain name consists of the expression "Reebok" followed by a hyphen and the geographic term "Philippines". 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. The Respondent is not using or plans to use the REEBOK trademark or the domain names incorporating the REEBOK trademark for a bona fide offering of goods or services. The Respondent has been actively using the REEBOK trademarks in the domain names and on the physical website to promote its website for illegitimate commercial gains, more specifically, by operating a fake REEBOK website offering counterfeit REEBOK goods. The Respondent was well aware of the Complainant's trademark at the time the Respondent registered the disputed domain name. The Respondent is trying to pass off the disputed domain name as the Complainant's website to sell competing and unauthorized goods. The Respondent is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 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. Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademarks REEBOK in Philippines. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition "WIPO Overview 3.0", section 1.2.1). It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of WIPO Overview 3.0. The Respondent's incorporation of the Complainant's mark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant's mark. The addition of the geographic term "philippines" with a hyphen, to the Complainant's trademark REEBOK, does not prevent a finding of confusing similarity with the Complainant's marks. Furthermore, the addition of the generic Top-Level Domain ("gTLD") ".com" is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent, will lead to this ground being set forth. Refraining from submitting any Response, the Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that the Respondent has rights to or legitimate interests in the disputed domain name. The Panel will now examine the Complainant's arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant's REEBOK trademarks in a domain name or in any other manner. Furthermore, the disputed domain name directs to a commercial website that allegedly offers REEBOK products at a discounted price, without any disclaimer as to the relation with or authorization of the Complainant, exacerbating the user confusion as to the website's affiliation to the Complainant. Under these circumstances, it is reasonable to infer that the products offered on the website at the disputed domain name are counterfeit of the Complainant's products. Such use for deliberately attracting Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant supports a finding that the Respondent lacks rights to or legitimate interests in the disputed domain name. page 4 The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 of a product or service on its website or location. In the Panel's view, a finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the Complainant submits that at the date of registration of the disputed domain name the Respondent would have had constructive, if not actual knowledge of the Complainant's mark REEBOK. The Panel's finding is reinforced given the construction of the disputed domain name, which combines the REEBOK mark together with the geographic term "phillipines" that is an indicator of the name of a country, as well as the fact that the disputed domain name resolves to a website allegedly offering the Complainant's trademarked goods. The Panel is satisfied that by directing the disputed domain name to a commercial website allegedly offering REEBOK goods similar to the Complainant's legitimate products at discounted prices, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. Having considered the Complainant's submissions and in the absence of a Response, the Panel accepts the Complainant's submission that on the evidence there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name. Consequently, the Panel finds that the disputed domain name was registered and used by the Respondent in bad faith within paragraph 4(a)(iii) of the Policy. page 5 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. /Daniel Peña/ Daniel Peña Sole Panelist Date: August 11, 2023
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