WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Puma SE v. Web Commerce Communications Limited

Case No. D2021-3441

1. The Parties

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

The Respondent is Web Commerce Communications Limited, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <puma-colombia.com> (“Disputed Domain Name”) is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 19, 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 October 22, 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 October 25, 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 November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2021.

The Center appointed Nicholas Weston as the sole panelist in this matter on December 20, 2021. 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 operates a multinational footwear and clothing company. The Complainant holds a portfolio of registrations for the trademark PUMA, and variations of it, in numerous jurisdictions. International Trademark No. 175859, for example, was registered in class 25 on March 26, 1954.

The Complainant owns a number of domain names including <puma.com>.

The Disputed Domain Name was registered on July 30, 2021.

The Disputed Domain Name is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant cites its International trademark registrations including No. 175859 registered on March 26, 1954 and No. 250298A registered on December 6, 1961, and numerous other International registrations, for the mark PUMA as prima facie evidence of ownership.

The Complainant submits that the mark PUMA is well known, and that its rights predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the PUMA trademark and that the similarity is not removed by the addition of the hyphen or the geographical descriptor “Colombia”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it allegedly resolved to a website advertising and offering for sale counterfeit PUMA branded products, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits that “by using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site 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

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(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.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark PUMA in the United States of America. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the PUMA trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark PUMA; (b) followed by a hyphen; (c) followed by the geographical name “Colombia”; (d) followed by the gTLD “.com”.

It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “puma-colombia”.

It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the geographical name “Colombia”: (see America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713 (“The addition of a place name generally does not alter the underlying mark to which it is added”); Puma SE c. Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2019-1114 (“the inclusion of a descriptive or geographic term in a domain name does not exclude confusing similarity”).

This Panel accepts the Complainant’s contention that the Disputed Domain Name is confusingly similar to the Complainant’s PUMA trademark.

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) (it is alleged) “fake goods are offered for sale on the website with the domain name in question” and; (ii) Respondent has not acquired or owned any trademark or service mark rights in the name “Puma”, and has not been commonly known by that name; and (iii) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain, to misleadingly divert consumers, or to tarnish Complainant’s Marks.

On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. There is also no evidence the Respondent has the Complainant’s permission to use the trademark PUMA (see Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055 (“in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”) and no evidence indicating that the Respondent is commonly known by the Disputed Domain Name (See: Veuve Clicquot Ponsardin Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (“so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”)).

Further, the composition of the Disputed Domain Name where, as here, it consists of the Complainant’s trademark and a geographical location, in this Panel’s view carries “a high risk of implied affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1).

This Panel notes that, while the Complainant has made the allegation without providing any evidence that the Disputed Domain Name resolves to a webpage offering counterfeit goods for sale, in the absence of a response, this Panel finds that the Complainant has, in any event, fulfilled its burden of establishing that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy requires that the Complainant must also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found. The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, given the composition of the Disputed Domain Name consists of the Complainant’s trademark and a geographical country name, this Panel infers that this is clear evidence of bad faith and that the Respondent was fully aware of the Complainant when registering the Disputed Domain Name (see Puma SE v. Wang Nan, WIPO Case No. D2020-2343 (“the well-known trademark PUMA”); Puma SE v. Sreejith N U, WIPO Case No. D2021-1708 (“the PUMA mark had been widely used and registered by Complainant before the Domain Name registration and enjoys worldwide reputation”).

In addition, a gap of several years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by 67 years.

On the issue of use, the Complainant alleges that the Disputed Domain Name was used to offer fake goods for sale and also provided evidence that the Disputed Domain Name is currently inactive. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (See WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these factors are present in this proceeding.

In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark PUMA and incorporated it in the Disputed Domain Name along with the country name “Colombia”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark. Further, this Panel finds that the Complainant used a privacy service to hide a false address in an attempt to avoid being held to account for its conduct.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <puma-colombia.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: December 28, 2021