Hi-TEC Sports International Holdings B.V. v Client Care, Web Commerce

WIPO Case No. D2024-1350

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hi-TEC Sports International Holdings B.V. v. Client Care, Web Commerce
Communications Limited

Case No. D2024-1350

1. The Parties

The Complainant is Hi-TEC Sports International Holdings B.V., Netherlands (Kingdom of the), represented by Chiever B.V., Netherlands (Kingdom of the).

The Respondent is Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrar

The Disputed Domain Names <magnum-australia.com>, <magnumbootscanada.com>,
<magnumbootsireland.com>, <magnumbootsitalia.com>, <magnumbootsnz.com>,
<magnumbootsportugal.com>, <magnumbootssverige.com>, <magnumbootsus.com>,
<magnumespana.com>, <magnummagyarorszag.com>, and <magnumnederland.com> (“the Disputed

Domain Names”) are 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 March 29, 2024.
On April 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Names. On April 7, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the Disputed Domain
Names, which differed from the named Respondent (Not Available) and contact information in the Complaint.
The Center sent an email communication to the Complainant on April 8, 2024, 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 April 10, 2024.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2024.

The Center appointed Colin T. O’Brien as the sole panelist in this matter on May 2, 2024. 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

Since 1982, the Complainant has designed, manufactured, distributed and sold clothing, footwear and
headgear under its trademark MAGNUM. The Complainant owns numerous trademark registrations for its

MAGNUM trademark globally including:

MAGNUM (United States Reg. No. 1764589, registered on April 13, 1993);
MAGNUM (European Union Reg. No. 6535661, registered on November 18, 2008);
MAGNUM (United Kingdom Reg. No. UK00002297210, registered on July 11, 2008); and

MAGNUM (China Reg. No. 6151203, registered on June 28, 2011).

The Complainant’s primary website is “

The Disputed Domain Names were registered on the following dates:

<magnum-australia.com> – December 1, 2023
<magnumbootscanada.com> – December 1, 2023
<magnumbootsireland.com> – December 1, 2023
<magnumbootsitalia.com> – December 1, 2023
<magnumbootsnz.com> – December 1, 2023
<magnumbootsportugal.com> – December 1, 2023
<magnumbootssverige.com> – December 1, 2023
<magnumbootsus.com> – December 1, 2023
<magnumespana.com> – December 22, 2023
<magnummagyarorszag.com> – December 1, 2023

<magnumnederland.com> – December 1, 2023

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Names.

Notably, the Complainant contends that it has acquired rights in the trademark MAGNUM which predate the registration of the Disputed Domain Names.

The Disputed Domain Names fully incorporate the trademark MAGNUM and are therefore confusingly similar to the Complainant’s MAGNUM trademark. Given the fact that several different countries and ISO-codes have been added to the Disputed Domain Names do not change the fact that those Disputed Domain Names are confusingly similar, while these are generic additions which do not alter the similarity with the distinctive element ”magnum”. The “.com” suffix in the Disputed Domain Names should be disregarded as it is a technical requirement of registration.

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No person or entity anywhere in the world, other than the Complainant has the legal right to use any mark that includes the Complainant’s trademark to identify clothing, footwear, accessories and goods and services related thereto. The Complainant acquired rights in its MAGNUM trademark well before the Respondent registered the Disputed Domain Names. The Respondent has no connection or affiliation of any kind with the Complainant, nor has the Complainant ever granted the Respondent license or consent, express or implied, to use the MAGNUM trademark in any manner.

The Respondent could have easily found the Complainant’s trademark registrations or other references to the Complainant’s trademarks if the Respondent had done some basic checks at the time that it registered the Disputed Domain Names. The Complainant’s MAGNUM trademarks have become well known in many countries throughout the world in long before the date of first registration of the Disputed Domain Names.

By utilizing the Disputed Domain Names which incorporate the trademark of the Complainant for identical goods, the Respondent created an impression that the Disputed Domain Names and the associated websites originate from the Complainant or have a commercial affiliation with the Complainant. It is evident that the Respondent is aware of trademark infringement, given that the logos, names, and products are replicated from the Complainant’s website. This misleads the public regarding the origin of the Disputed Domain Names and websites, causing confusion among consumers.

The Respondent is knowingly taking advantage of and capitalizing on the Complainant’s well-known trademark to trade on the Complainant’s reputation. This is evident, especially as the Respondent copied the concept of the Complainant’s business, including key words, trademarks, and products featured on the Complainant’s website.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in the MAGNUM trademark throughout the world. The addition of the descriptive term “boots” with a geographical term or just a geographical term does not prevent a finding of confusing similarity as the Complainant’s MAGNUM mark is clearly recognizable in the Disputed Domain Names. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Disputed Domain Names are confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and has not been commonly known by the Disputed Domain Names. The fact that the Respondent obtained the Disputed Domain Names years after the Complainant had begun using its globally registered and used MAGNUM mark indicates the Respondent sought to piggyback on the Complainant for illegitimate reasons. The evidence provided by the Complainant shows that the Disputed Domain Names resolved to active websites seemingly impersonating the Complainant by featuring the Complainant’s trademark and logo apparently in an attempt to convince users they had reached the Complainant’s actual website.

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After a complainant has made a prima facie case, the burden of production shifts to a respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain

Names.

In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s
lack of rights or legitimate interests in respect of the Disputed Domain Names, the Panel finds that the

Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Disputed Domain Names were registered years after the Complainant first registered and used its MAGNUM mark. The evidence provided by the Complainant makes it clear that the Respondent undoubtedly knew of the Complainant’s widely known MAGNUM mark and knew that it had no rights or legitimate interests in the Disputed Domain Names.

There is no benign reason for the Respondent to have registered the Disputed Domain Names that are confusingly similar to the Complainant’s mark. Further, the use by the Respondent is clearly in bad faith. The Complainant has established that the Respondent used the Disputed Domain Names in an attempt to create copycat websites that Internet users would assume are operated by the Complainant.

Accordingly, the Panel concludes that the Complainant has satisfied 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 Names, <magnum-australia.com>, <magnumbootscanada.com>,
<magnumbootsireland.com>, <magnumbootsitalia.com>, <magnumbootsnz.com>,
<magnumbootsportugal.com>, <magnumbootssverige.com>, <magnumbootsus.com>,
<magnumespana.com>, <magnummagyarorszag.com>, and <magnumnederland.com>, be transferred to

the Complainant.

/Colin T. O'Brien/
Colin T. O'Brien
Sole Panelist
Date: May 14, 2024