The Complainant is Puma SE, Germany, represented by Göhmann Rechtsanwälte, Germany.
The Respondent is Internet Domain Services BS Corp, The Bahamas / Joan Gonzalez, United States of America (“United States”).
The disputed domain name <pumaonlinesale.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 22, 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 October 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 October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 23, 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.
The Complainant is in the sportswear business. It is the owner, amongst several others (Annex 4 to the Complaint), of the following trademark registrations:
- International Trademark Registration No. 458846 for the word and device mark PUMA registered on March 10, 1981, in classes 18, 25, and 28; and
- International Trademark Registration No. 507754 for the word and device mark PUMA, registered on October 30, 1986, in class 01 through 42.
The disputed domain name <pumaonlinesale.com> was registered on November 19, 2018, and has been used in connection with a website operating as an online store depicting what appears to be counterfeit products.
The Complainant asserts that the disputed domain name is identical to the Complainant’s PUMA trademark, registered world-wide for different goods and services by the Complainant. According to the Complainant, the addition of the generic terms “online” and “sale” to the disputed domain name is merely descriptive and does not prevent the likelihood of confusion with the Complainant’s trademark.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name given that it has been using the disputed domain name in connection with an online shop selling what appears to be fake products bearing the Complainant’s trademark; and
ii. the Respondent has not been commonly known by the disputed domain name.
The registration and use of the disputed domain name in bad faith, according to the Complainant, arises from the Respondent’s use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark and products.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
The Complainant has established rights in the PUMA trademark.
The disputed domain name includes the entirety of the Complainant’s trademark. The addition of the “online” and “sale” suffixes does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (WIPO Overview 3.0), sections 1.7 and 1.8).
The first element of the Policy has been established.
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, and as the evidence submitted clearly indicates, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, given that the Respondent has been using the disputed domain name in connection with an online store depicting what appears to be counterfeit products, as well as reproducing the Complainant’s trademark and logos.
The Respondent’s use of the disputed domain name in connection with an online store in which the Complainant’s trademark is reproduced, offering for sale what appear to be counterfeit goods cannot 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 the Complainant’s consumers.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates with the indication of the absence of a right or legitimate interest in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s webpage, which operates as an online store in which the Complainant’s trademark is reproduced, offering for sale what appear to be counterfeit goods.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for its own commercial gain.
Other factors corroborate a finding of bad faith, such as the indication of what appears to be a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to the Respondent, as well as the Respondent’s lack of reply to the proceeding, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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 <pumaonlinesale.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: December 7, 2020