The Complainant is Puma SE, Germany, represented by Appleyard Lees IP LLP, United Kingdom.
The Registrant is Stephen Connell, Puma Transport Ireland Limited, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2019, by email. On April 11, 2019, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On April 12, 2019, IEDR 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 April 17, 2019, 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 April 18, 2019.
The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 24, 2019. In accordance with the Rules, paragraph 5.1, the due date for Response was May 23, 2019. No Response was received and the Center notified the Respondent’s default on May 24, 2019. On the same day, the Center received an email communication from the Respondent.
The Center appointed Adam Taylor as the sole panelist in this matter on May 29, 2019. 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 well-known multinational sportwear company which trades under the name “Puma” and whose annual turnover is in excess of EUR 4 billion.
The Complainant owns many registered trade marks for or containing the word PUMA which have effect in Ireland including European Union Trade Mark No. 12579728 for the stylised word PUMA, filed on February 6, 2014, in classes 18, 25, and 28.
The disputed domain name was registered on April 4, 2016.
According to six archive screenshots spanning the period from June 2016 to August 2018, the “contact us” page of the website at the disputed domain name consisted of a large image of a puma together with the words: “[W]e are currently building our new site, check back soon”. The page included the Registrant’s name “Puma Transport Ireland Limited” (in the copyright notice) as well as its contact details. There was also a large white rectangle on the page, suggestive of a map error.
The Complainant has not exhibited any versions of the home page of the website at the disputed domain name. When checked by the Panel on June 13, 2019, the homepage consisted of the same puma image as on the “contact us” page, together with prominent branding consisting of the word “puma” in large font with the word “transport” in smaller font beneath. The “contact us” page remained as shown in the archive screenshots mentioned above, including the under construction notice. 5. Parties’ Contentions A. Complainant
A summary of the Complainant’s contentions is as follows:
The Complainant owns substantial goodwill and reputation in the mark PUMA in Ireland as well as worldwide.
The Complainant has achieved extensive press coverage.
The Complainant sponsors Formula 1 and other vehicle racing events and also promotes its brand on a range of vehicles including delivery and public transport vehicles.
Use of the word “puma” on a vehicle would naturally bring the Complainant to mind and lead to an assumption that the Complainant is connected with the vehicle.
The Complainant’s trade mark is identical to the disputed domain name.
The lacks rights or legitimate interests in the disputed domain name.
There is no evidence that the Registrant has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services or operation of a business. The disputed domain name has remained inactive since it was acquired.
The disputed domain name does not correspond to the personal name or a pseudonym of the Registrant.
The disputed domain name had been registered and is being used in bad faith.
The disputed domain name strongly and falsely implies a connection with the Complainant.
The disputed domain name was registered and used to block the Complainant. The Registrant has sat on the disputed domain name for years. The only logical explanation is that the Registrant registered the disputed domain name to prevent the Complainant from registering it.
The Registrant has registered and is using the disputed domain name to interfere with or disrupt the Complainant’s business, as indicated by the Complainant’s fame and the Registrant’s inactivity. There is no active website at the disputed domain name. The contact details are incomplete. The phone number does not direct to a business trading as “Puma” but, instead, to “McCarthy Oil”.
Even if there had been genuine trade via the disputed domain name, the Registrant’s purported business activities are related to transportation and vehicles, a field in which the Complainant also operates. This is likely to disrupt the Complainant’s business.
The disputed domain name is likely to dilute the reputation of the Complainant’s trade mark.
The Registrant has not engaged in any meaningful negotiations with the Complainant despite the Complainant’s best efforts to resolve the matter. In response to the Complainant’s communication, the individual responsible for the disputed domain name telephoned the Complainant and promised a reply in writing but none was provided. Nor has the Registrant provided any meaningful cooperation in attempting to resolve the matter.
The Registrant has failed to explain why it was entitled to register and use the disputed domain name. The most likely explanation is that the Registrant’s intention was to capitalise on the reputation of the Complainant. B. Registrant
The Registrant did not respond to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that:
- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights;
- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith. A. Identical or Misleadingly Similar
Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
The Complainant owns registered trade marks for PUMA which have effect in Ireland. The Complainant also possesses unregistered trade mark rights deriving from its extensive use of that name in Ireland.
The disputed domain name is identical to the Complainant’s protected identifier, disregarding the country code Top-Level Domain “.ie”.
The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy. B. Rights in Law or Legitimate Interests
At this point it is relevant to refer to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), panels in IEDR Policy cases have previously considered it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. See, e.g., MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd.,WIPO Case No. DIE2018-0002, and Mr. Rooter LLC v. David Doherty and Unbeatable Drain Cleaning Limited,WIPO Case No. DIE2018-0006.
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Registrant to use its trade mark.
Paragraph 3.1 of the IEDR Policy gives examples of circumstances which, if proved, suffice to demonstrate that a registrant possesses rights or legitimate interests in the disputed domain name.
There is no evidence that paragraphs 3.1.2 or 3.1.3 of the IEDR Policy apply in the circumstances of this case.
As to paragraph 3.1.1 of the IEDR Policy, there is no evidence of any demonstrable good faith preparations to use the disputed domain name for a good faith offering of goods or services or operation of a business.
While the Registrant’s website is somewhat basic and has always been in a state of construction, it was open to the Registrant to come forward and argue that it nonetheless constituted demonstrable good faith preparations to use the disputed domain name. Or the Registrant might have provided evidence of other such preparations. But the Registrant has not appeared in this proceeding to make such a case, notwithstanding the Complainant’s assertion that the disputed domain name was not registered for the purposes of a genuine business.
Furthermore, the fact that the website has been under construction for such a long period - some three years – without explanation is itself an indicator that the website is not a genuine precursor to a good faith offering of goods or services.
For the above reasons, the Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by theRegistrant.
The Panel therefore finds that the Complainant has established the second element of paragraph 1.1 of the IEDR Policy. C. Registered or Used in Bad Faith
As mentioned above, the Registrant had an opportunity to file a Response and to provide evidence that it registered and used the disputed domain name for the purpose of a genuine business trading under the name “Puma Transport” or similar. Even if so, the Registrant might have had an uphill struggle to convince the Panel that it selected the disputed domain name independently of the Complainant, given the high degree of fame associated with the Complainant’s mark, which extends beyond sportswear into the area of transportation and vehicles. Amongst other things, the Panel would have wanted to know why the Registrant selected a domain name consisting of the word “puma” alone, i.e. without adding the term “transport”.
However, the Registrant has remained silent in the face of the Complainant’s assertions that there is no genuine intended transport business. Amongst other things, the Complainant has questioned the validity of the contact details used on the website, pointing out that the telephone number relates to an entirely different kind of business. The Complainant has also claimed that the Registrant failed to follow through on a promise to provide a written response to the Complainant’s pre-action communication to the Registrant (which has not been provided to the Panel).
In the above circumstances, the Panel concludes that, on balance, the Registrant registered the disputed domain name in order to target the Complainant’s mark in an unfair manner, most likely with a view to selling the disputed domain name to the Complainant for a substantial sum. In the absence of any rebuttal from the Registrant, the Panel concludes that the Registrant’s website at the disputed domain name was designed purely to justify its acquisition of the disputed domain name, i.e., to give the false impression that the disputed domain name had been registered by and for a business genuinely using “puma” as part of its name.
The Panel therefore finds that the Respondent registered and/or used the disputed domain name in bad faith and that the Complainant has established the third element of paragraph 1.1 of the IEDR Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: June 13, 2019
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