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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Puma SE v. Super Privacy Service LTD c/o Dynadot / Andingmen, Tina Nono

Case No. D2020-2220

1. The Parties

The Complainant is Puma SE, Germany, represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, Germany.

The Respondent is Super Privacy Service LTD c/o Dynadot, United State of America / Andingmen, Tina Nono, China.

2. The Domain Name and Registrar

The disputed domain name <jppumasales.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2020. On August 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2020, 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 August 25, 2020 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 amended Complaint on August 26, 2020.

The Center verified that the Complaint together with the amended 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 August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2020.

The Center appointed Keiji Kondo as the sole panelist in this matter on September 28, 2020. 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 the owner of the trademark PUMA, which the Complainant has registered worldwide for different goods and services in different classes, inter alia, class 25 of Nice classification, which covers sports shoes. WIPO Global Brand Database lists many trademark registrations for the Complainant’s trademark PUMA, such as international trademark registration number 458847, registered March 10, 1981.

The Respondent registered the disputed domain name <jppumasales.com> on February 1, 2020.

The website with the disputed domain name shows sports shoes and other related goods under a trademark that competes with the Complainant’s trademark PUMA in Japanese language. The website, showing prices of goods and providing a shopping cart, appears to be an online shop.

5. Parties’ Contentions

A. Complainant

The part “puma” of the disputed domain name <jppumasales.com> is identical to the trademark of the Complainant, namely the word “puma”. “jp” appears as a separated word, namely the country code of Japan. In the context of a domain name “jp” could be understood as a local limitation of the website puma. “sales” appears as another separated word, namely a reference to the purpose. In the context of a domain name “sales” could be understood as an information that products of the Complainant are offered on this website and can also be purchased on this website. Therefore, “jp” and “sales” are merely descriptive and thus not distinctive. The Complainant submits that this means that the relevant part with respect to a risk of confusion is “puma” which is identical to the trademark of the Complainant.

Before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s use of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. In contrast, says the Complainant, the opposite is the case because fake goods were offered for sale on the website with the disputed domain name.

The Respondent has not been commonly known by the disputed domain name. Only fake goods of competitors of the Complainant are offered using the disputed domain name. Until recently, goods of the Complainant’s brand were offered for sale on the website of the disputed domain name. Therefore, the impression is given that original goods of the Complainant and directly from the Complainant were offered. The Complainant submits that because of this misdirection the Respondent could not been commonly known by the disputed domain name.

The disputed domain name is used to infringe the aforementioned trademarks. The Respondent sells fake goods and uses the mark for it illegally. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent intends to use the disputed domain name for commercial gain misleadingly to divert consumers or tarnish the trademark or service mark of the Complainant.

Moreover, obviously, the Respondent has registered and uses the disputed domain name in bad faith so that the Respondent cannot claim any rights with respect to the disputed domain name.

The Complainant submits that 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.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name consists of “jp”, “puma” and “sales”, among which “puma” is the Complainant’s trademark. Among Internet users, “jp” is easily recognized as abbreviation of Japan, or Japan’s country code. The part “sales” implies that the website is an online shop or a similar kind of website for some commercial activities. Therefore, an Internet user would easily recognize “puma” separately from the other parts in the disputed domain name.

It is well accepted that the test for confusing similarity serves as a standing requirement, building the connection between a disputed domain name and the trademark rights which the dispute is based on. Typically a domain name is found to be confusingly similar to a trademark, when the domain name includes the trademark.

In the present case, even with the addition of “jp” and “sales”, an average observer of the disputed domain name will recognize “puma” in it. Therefore, “jp” and “sales” do not affect the finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The top level domain (“TLD”) “.com” in the disputed domain name is disregarded under the test for confusing similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark PUMA.

B. Rights or Legitimate Interests

The name of the Respondent, who is behind the privacy protection service, is Tina Nono, which is in no way similar to “PUMA”. In addition the Respondent did not reply to the Complainant’s contentions. Therefore, the Panel concludes that the Respondent has not been commonly known by the disputed domain name.

The website with the disputed domain name appears to offer for sale goods of another brand than “PUMA”. Even only with this fact, it can be concluded that the Respondent is making a commercial use, and thus not making a legitimate noncommercial or fair use.

Finally, the Complainant contends that the Respondent offers fake goods for sale using the disputed domain name. However, the Complainant has submitted no evidence that the goods offered for sale by the Respondent were fake.

Nevertheless, the Panel, for the following reasons, finds that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services. First, regardless whether the products sold on the website are fake or genuine, the Respondent sells also goods of the Complainant’s competitors. Second, the Respondent does not disclose its relationship with the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Considering that the Complainant’s trademark PUMA is known worldwide, and that the Respondent is in the business of sports shoes and other related goods, the Panel concludes that the Respondent registered the disputed domain name knowing the Complainant’s trademark PUMA.

Further, it should be concluded that the disputed domain name <jppumasales.com> would mislead Internet users to recognize that the website with it is somehow related to the Complainant. For example, one may think that the website is provided by a Japanese subsidiary of the Complainant. Moreover, the Respondent’s website shows sports shoes, which is one of the main lines of the Complainant’s goods. This may strengthen the misunderstanding.

It is not inconceivable that such misunderstanding could increase the number of Internet users visiting the Respondent’s website. Such an increase of visitors would give the Respondent commercial gain by increasing the number of purchasers of the Respondent’s goods offered for sale at the website.

Therefore, the Panel concludes that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark PUMA as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Accordingly, the Panel finds that the disputed domain name <jppumasales.com> was registered and is being used in bad faith.

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 <jppumasales.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: October 10, 2020

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