The Complainant is Puma SE, Germany, represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, Germany.
The Respondent is Bumgarner Kristian, Germany.
The disputed domain name <tenispumastore.com> (the “Disputed Domain Name”) is registered with 1API GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 13, 2021, 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 January 14, 2021, 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 January 15, 2021.
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 January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2021. On March 1, 2021, due to an apparent issue with the notification, the Center granted the Respondent a five day period in which to indicate whether it wished to participate in this proceeding. The Center did not receive any communication from the Respondent.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 11, 2021. 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.
The Complainant is a company based in Germany and is one of the world’s leading producers of sports articles.
The Complainant is the registered owner of a large international trademark portfolio for signs consisting of or including the term PUMA and invokes amongst others International Trademark Registration PUMA No. 437626, designating various jurisdictions including Germany, registered on April 12, 1978 for goods in classes 18, 25, and 28.
The Disputed Domain Name was registered on August 10, 2020.
From the evidence before this Panel, the Disputed Domain Name does not resolve to any website.
The Complainant states the following:
Firstly, the Complainant points out that the Disputed Domain Name is identical to the registered trademarks in which the Complainant has rights. In fact, the Disputed Domain Name contains the trademark PUMA identically between the descriptive terms “tenis” (instead of “tennis” spelled with two “n”) and “store”. These two terms are merely descriptive so that the relevant part remains the term “puma” which is identical to the Complainant’s trademark.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. According to the Complainant the Disputed Domain Name was formerly used for a website offering fake PUMA goods. Such use cannot be considered bona fide use or fair use in the sense of paragraph 4(c) of the Policy and, additionally, misleadingly diverts consumers or tarnishes the trademark at issue.
Thirdly, the Complainant contends that the Respondent registered and uses the Disputed Domain Name in bad faith. In the Complainant’s view, by using the Disputed Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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 in bad faith.
The Panel is satisfied that the registrant of record for the Disputed Domain Name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has provided evidence that it is the registered owner of various trademark registrations consisting of the verbal element PUMA, in particular International Trademark Registration No. 437626, designating amongst others Germany, registered on April 12, 1978 for goods in classes 18, 25, and 28. This trademark significantly predates the creation date of the Disputed Domain Name, which is August 10, 2020.
UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark PUMA is fully included in the Disputed Domain Name.
It is the view of this Panel that the combination of the trademark PUMA with the dictionary terms “store” and “tenis” (even if spelled with a typo) does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. The Panel shares the view expressed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, according to which “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”.
Hence, this Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). Accordingly, paragraph 4(a)(i) of the Policy is satisfied.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the Disputed Domain Name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the Disputed Domain Name:
No content is displayed on the website to which the Disputed Domain Name resolves. Such use can neither be considered a bona fide offering of goods or services nor 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 in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, e.g., KPMG International Cooperative v. “Angelina Jolie”, Angeljolie LLC., WIPO Case No. D2020-1341; Sanofi, Genzyme Corporation v. Domain Privacy, WIPOCase No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320). The Panel finds it likely that the Respondent selected the Disputed Domain Name with the intention to take advantage of the Complainant’s registered trademark PUMA by registering a domain name consisting of that trademark and two descriptive terms.
Finally, the Panel notes that there is no evidence in the record or WhoIs information that could lead the Panel to the conclusion that the Respondent, whose name is Bumgarner Kristian, might be commonly known by the Disputed Domain Name or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
Previous UDRP panels have found that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the Disputed Domain Name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
Currently, the Respondent does not actively use the Disputed Domain Name. The Complainant further ascertains that in the past, counterfeit PUMA products had been offered for sale on the website to which the Disputed Domain Name resolved. However, since the Complainant did not provide any evidence of this alleged previous use, the Panel is unable to verify this allegation so the analysis will proceed based on the lack of active use.
With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, prior UDRP panels have found that the apparent lack of active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, WIPO Case No. D2016-0068; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel must therefore examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark, no response to the complaint having been filed, and the implausibility of any good faith use to which the domain name may be put (see WIPO Overview 3.0 at section 3.3 with further references, and see Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, WIPO Case No. D2016-0068).
In the case at hand, the Panel finds that the following circumstances surrounding the registration, i.e.,
(i) the Respondent’s failure to provide any response to the Complaint with any conceivable explanation of its behavior,
(ii) the undisputed reputation of the PUMA trademark,
(iii) the fact that the PUMA trademarks existed for decades before the Disputed Domain Name was registered,
(iv) the addition of related, descriptive terms to the Complainant’s trademark, and,
(v) the implausibility of any good faith use to which the Disputed Domain Name may be put,
suggest that the Respondent was aware at the time of registration that it has no rights or legitimate interests in the Disputed Domain Name, and that the Disputed Domain Name has been registered and is being used in bad faith (see Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, WIPO Case No. D2016-0068; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460; Sanofi, Genzyme Corporation v. Domain Privacy, WIPO Case No. D2016-1193). Consequently, the Panel concludes that the Respondent knew or should have known the trademark PUMA when it registered the Disputed Domain Name in connection with descriptive terms which are directly applicable to the Complainant’s core business, and that there is no plausible legitimate active use that the Respondent could make of the Disputed Domain Name.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy.
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 <tenispumastore.com> be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: March 25, 2021