Complainant is Puma SE, Germany, represented by RNA IP Attorneys, India.
Respondent is Sreejith N U, India.
The disputed domain name <pumaumbrella.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on July 29, 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.
Complainant is a company organized and existing under the laws of Germany. It is one of the world’s leading sports brands designing, developing, selling and marketing footwear, apparel, and accessories. For over 65 years Complainant’s group is engaged in the business of manufacturing and marketing a wide range of products, inter alia, sports shoes, apparel, and accessories worldwide. Complainant’s group is one of the world’s leaders in the sporting goods industry, manufacturing and marketing its fashion products under the name “PUMA”.
Complainant’s consolidated sales for the financial year 2016 were EUR 3626.7 million. Complainant’s (worldwide) net sales for 2019 were EUR 5502.2 million and (worldwide) advertisement and promotional figures for 2019 were EUR 1112 million. Complainant offers its goods also through its main website at “www.puma.com”.
The trademark PUMA was coined in 1948 by Rudolf Dassler and was registered on October 1, 1948. Complainant’s PUMA products are available in more than 120 countries worldwide, including India, and it employs more than 10,000 people worldwide. Complainant’s trademark PUMA is ranked at position 5th in the Top 10 shoe brands of India.
Complainant is the owner of numerous trademark registrations for PUMA around the world, including in India, where he holds inter alia the trademark registration No 323053/ 18, PUMA (word), filed on February 15, 1977 and registered for goods in international class 18, namely articles made of leather or imitations thereof, namely trunks and travelling bags and carrying bags and cases, not included in other classes.
Furthermore, Complainant is the owner of inter alia the domain name <puma.com> which was registered on September 19, 1997.
The Domain Name was registered on May 23, 2015 and leads to a website (the Website) offering for sale umbrellas and rainwear under the name PUMA.
Complainant has initiated civil litigation proceedings against Respondent in the Hon’ble High Court of Delhi (CS (Comm) 183/2021) and has been successful in obtaining ex-parte injunction order against the Respondent.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Domain Name incorporates the PUMA trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the word “umbrella”, does not prevent a finding of confusing similarity, as the PUMA trademark remains clearly recognizable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to Complainant’s PUMA trademark.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name is used to host the Website to impersonate Complainant and attempt to mislead consumers into thinking that the goods offered for sale on the Website purportedly originate from Complainant. Such use demonstrates neither a bona fide offering of goods nor a legitimate interest of Respondent (Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502). In addition, the nature of the Domain Name, comprising the first part of Complainant’s trademark in combination with the term “umbrella” carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Because the PUMA mark had been widely used and registered by Complainant before the Domain Name registration and enjoys worldwide reputation, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business, provided also online, namely online sales (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, the content of the Website gives the impression that it originates from Complainant, displaying PUMA signs, thereby giving the false impression that the Website emanates from Complainant. This further supports a finding of registration in bad faith reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (WIPO Overview 3.0, section 3.1.4).
The above further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).
As regards bad faith use, Complainant demonstrated that the Domain Name was employed to host a Website which appeared falsely to be that of Complainant.
Furthermore, the Domain Name has been operated by intentionally creating a likelihood of confusion with Complainant’s trademark and business. This further supports the finding of bad faith use (Arkema France v. Aaron Blaine, supra; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 and WIPO Overview 3.0, sections 3.1.4 and 3.2.1).
Lastly, the Panel notes that, per Complaint, Complainant has initiated civil litigation proceedings against the Respondent in the Hon’ble High Court of Delhi (CS (Comm) 183/2021) and has been successful in obtaining ex-parte injunction order against the Respondent.
Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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 <pumaumbrella.com> be transferred to the Complainant.
Marina Perraki
Sole Panelist
Date: August 12, 2021