The Complainant is Puma SE, of Germany, represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, Germany.
The Respondent is Kiril Vaitsekhovich, of Belarus.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 22, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On December 23, 2021, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 30, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on January 20, 2022. The Center received an email communication from the Respondent on January 22, 2022, requesting an extension of time to file a Response, and two other email communications on January 26, 2022.
The Center appointed Steven A. Maier as panelist in this matter on January 27, 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.
4. Extension of Time for Filing a ResponseIn his communications with the Center referred to above, the Respondent indicated that he intended to respond substantively to the Complainant but had been prevented by ill health from so doing. In exercising its general powers under paragraph 10 of the Rules, the Panel must balance the need to ensure that each party is given a fair opportunity to present its case against the need to ensure that the administrative proceeding takes place with due expedition. With these objectives in mind, the Panel granted the Respondent an extension of time to file a Response. The Respondent filed a Response accordingly on February 8, 2022.
5. Factual BackgroundThe Complainant is a company located in Germany.
The Complainant is the owner of numerous trademark registrations for or including the name PUMA. It provides evidence in particular of 39 active International Trademarks with registration dates ranging from 1954 until 2021. The registrations include word marks PUMA, figurative marks including the word PUMA in stylized text, and figurative marks including the word PUMA and a cat design. The trademarks are registered in numerous International Classes for a wide range of goods and services. The trademarks include, for example, International Trademark registration number 369917 for a figurative mark including the name PUMA, registered on May 29, 1970.
The disputed domain name was registered on October 29, 2018.
The Complainant provides evidence that the disputed domain name has resolved to a website stating “The Domain Name puma.ae Is For Sale!” The website refers to the disputed domain name as a “premium domain” and invites visitors to submit an offer to purchase the disputed domain name.
6. Parties’ Contentions A. ComplainantOther than by exhibiting a list of its International Trademarks, the Complainant makes no submissions, nor provides any evidence, of its business history, profile or activities or of any commercial use that it has made, or is currently making, of its PUMA trademarks.
The Complainant submits that the disputed domain name is identical to its PUMA trademark and that the country code Top-Level Domain (“ccTLD”) “.ae” is irrelevant to that determination.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence of the Respondent having used the disputed domain name in good faith, the Respondent has not commonly been known by the disputed domain name and the disputed domain name represents and infringement of the Complainant’s trademarks.
The Complainant submits that the disputed domain name has been registered or is being used in bad faith. It refers to the website offering the disputed domain name for sale and asserts that the Respondent registered the disputed domain name solely for the purpose of selling it to the Complainant as owner of the PUMA trademark. The Complainant submits further that the Respondent is cybersquatting for the purpose of profit maximization.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent submits that the word “puma” is a word in “common vocabulary” that refers to a large cat.
The Respondent states that he obtained the disputed domain name for the purpose of creating a “site/project” or for “some possible future startup/project”, although he provides no further information in this regard.
The Respondent submits that the disputed domain name is an attractive four-letter domain name and is valuable for that reason.
The Respondent submits that he registered the disputed domain name over three years ago without considering any connection to the Complainant. He states that he obtained it on a “first come first served” basis and is entitled to invest in a domain name of this nature without violating the legitimate interests of others.
The Respondent submits that he has never approached the Complainant seeking to sell the disputed domain name to it and that the general offer to sell the domain name was a legitimate activity on his part.
7. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that:
(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 or is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has established that it is the owner of numerous registered trademarks comprising or including the name PUMA. The disputed domain name is identical to the Complainant’s trademark, ignoring the ccTLD “.ae” which is typically to be disregarded for the purposes of comparison. The Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the Respondent states that he registered the disputed domain name for the purpose of a website or possible future project, he provides no information as to what that website or project may be, or (if the supposed project was so related) how it may be related to the stated dictionary meaning of the disputed domain name. Nor does he provide any evidence of any preparations to use the disputed domain name in this manner.
The Respondent does not dispute having offered the disputed domain name for sale, but contends that this is a legitimate activity in respect of a “common vocabulary” word which may be inherently attractive to domain name investors. While an offer to sell a domain name comprising a dictionary word may not of itself signify bad faith as long as it does not target a trademark owner’s mark, neither does it by itself generally give rise to rights or legitimate interests unless the sale forms part of a bona fide business operation. As observed in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “…panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.”1 The Panel does not, however, consider that the Respondent’s activity in this case is part of a bona fide undertaking.
There being no other evidence of rights or legitimate interests on the Respondent’s part, the Panel therefore finds that the Complainant has made out its case under this element.
C. Registered or is Being Used in Bad FaithIn order to succeed in the Complaint, the Complainant must establish that the disputed domain name was either registered in bad faith or that it has been used in bad faith. In order to establish that the disputed domain name was registered in bad faith, it would typically show that the Respondent was more likely than not to have been aware of the Complainant’s trademark at the time he registered the disputed domain name. While the Complainant relies on its trademark registrations, including those which predate the registration of the disputed domain name, that is insufficient by itself for the purposes of the Policy to establish a presumption that the Respondent was aware of the trademarks in question: see, e.g., section 3.2.2 of WIPO Overview 3.0 which makes clear that “constructive notice” of a trademark, i.e.,knowledge arising from the fact of registration alone, will only be recognized by panels in limited circumstances which do not have application in this case.
As observed in paragraph 6.A above, the Complainant, which is legally represented, makes no submissions, nor provides any evidence whatsoever, about its business history, profile, or activities or of any commercial use that it has made, or is currently making, of its PUMA trademarks. Typically, a Complaint under the Policy will include particulars of the Complainant’s business history and profile, including such matters as, for example, its geographical area or areas of operation; numbers of employees and customers; annual turnover and promotional spend related to the trademark in question; media and industry recognition and awards; and online and social media presence. The Complaint in this case includes no such information, indicating no basis to conclude that the Respondent is likely to have been aware of the Complainant’s PUMA trademark at the time the disputed domain name was registered.
While its counsel should be aware that the Complainant has therefore risked dismissal of the Complaint on this basis, the Panel considers that it is also reasonable to take into account real-world factor that the PUMA trademark is de facto a famous or well-known trademark in the sports clothing and accessories sector. As discussed in section 4.8 of WIPO Overview 3.0, a panel may in appropriate circumstances take “judicial notice” of matters such as the reputation of a well-known trademark. The Panel also observes that the PUMA trademark has previously been held in other proceedings under the UDRP to have gained the status of a famous or well-known trademark: see e.g., Puma SE v. Puma, Exports Pvt Ltd, WIPOCase No. D2021-1757, in which the Panel stated: “This is a famous trademark.”
Taking all these circumstances in the round, the Panel finds on balance that the Respondent is more likely than not to have been aware of and targeted the Complainant’s PUMA trademark at the date he registered the disputed domain name. The Panel notes, indeed, that while the Respondent claims that his registration of the disputed domain name was unrelated to the Complainant’s trademark, he does not expressly disavow knowledge of that mark, nor does he convincingly explain his reason for having registered the disputed domain name.
While the Respondent describes the name “puma” as a “commonly-used and vocabulary word” describing a large cat, the Panel notes that it is undeniably a famous mark. In these circumstances, some further information would be required as to the Respondent’s intended use of the disputed domain name in connection with its relied-upon dictionary meaning. While the Respondent refers to a “site/project” and to “some possible startup/project in future”, he provides no information as to what that venture may be or how this may relate to the chosen term (nor for that matter how such plans would be reconciled with the offer to sell the disputed domain name).
The Respondent further submits that a four-letter domain name is inherently valuable. While that may in some circumstances be the case, any such argument is liable to be overridden in a case where the four letters in question represent a well-known trademark.
In all the circumstances of the case, and balancing the fame of the Complainant’s PUMA trademark against the Respondent’s somewhat unconvincing explanations for his choice of the disputed domain name, the Panel finds on the balance of probabilities that the Respondent is likely to have registered the disputed domain name with the Complainant’s trademark in mind and in the hope of deriving some financial benefit from the association between the disputed domain name and the Complainant’s famous trademark.
As to the Respondent’s use of the disputed domain name, the only documented use has been a general offer to the public to make an offer to purchase the disputed domain name. The Respondent submits in this regard that he has held the disputed domain name for several years and that he has never approached the Complainant with an offer to sell the disputed domain name. While these matters may be true, they do not in the view of the Panel extinguish the possibility that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for a sum in excess of his documented out-of-pocket costs associated with the disputed domain name (paragraph 4(b)(i) of the Policy): the Respondent may simply have been playing a “long game” in this regard. A further factor in this connection is that, given the fame of the Complainant’s trademark, there is clearly a limited number of uses that could legitimately be made of the disputed domain name without the risk of encroaching upon the Complainant’s trademark rights. In these circumstances, it is difficult to conceive of a significant market for what is described as a “premium domain”, other than comprising the Complainant itself.
The Panel therefore concludes, on the balance of probabilities, that the Respondent has used the disputed domain name in bad faith in the circumstances contemplated by paragraph 4(b)(i) of the Policy.
The Panel therefore finds that the disputed domain name has been registered or is being used in bad faith.
8. DecisionFor 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,
Steven A. Maier
Sole Panelist
Date: February 23, 2022
1 In view of the fact that the Policy is based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Policy and cases decided under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding.