Puma SE v Client Care, Web Commerce Communications Limited

WIPO Case No. D2022-0015

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Puma SE v. Client Care, Web Commerce Communications Limited

Case No. D2022-0015

1. The Parties

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

Steuerberater Partnerschaft, Germany.

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

2. The Domain Name and Registrar

The disputed domain name <pumaicolombia.com> 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 January 4, 2022. On January 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2022, 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 January 5, 2022 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 January 10, 2022.

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 January 11, 2022. In accordance with the Rules, paragraph
5, the due date for Response was January 31, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 1, 2022.

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The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 3, 2022. 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 owns the PUMA mark, which enjoys protection through many registrations worldwide.

The Complainant is, inter alia, the owner of:

- European Union Trademark registration number 018319757 for the PUMA trademark (figurative), registered

on February 16, 2021; and,

- International Trade Mark registration number 175859 for the PUMA trademark (word), registered on March

26, 1954.

The disputed domain name was registered on September 29, 2021.

The disputed domain name resolves to a website where the Complainant’s trademark, as well as purported

PUMA trademarked goods, are displayed.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

(a) the disputed domain name is confusingly similar to the Complainant’s trademark;
(b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and

(c) the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the

Policy have been satisfied, namely:

(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.

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A. Identical or Confusingly Similar

The Complainant has established rights in the PUMA trademark.

The disputed domain name consists of the PUMA trademark combined with the geographical term “Colombia” and the letter “i” in between. This Panel agrees with the Complainant’s assertion that the addition of the geographical term “Colombia” and of the letter “i” in the disputed domain name does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.

See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Furthermore, the applicable Top-Level Domain (TLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

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

B. Rights or Legitimate Interests

prima facie bona fide offering of goods or services. In fact, it appears that the disputed domain name is used to direct Internet users to a website where, according to the Complainant, fake PUMA branded goods are sold. Moreover, the Respondent has not replied to the Complainant’s contentions claiming any rights or legitimate interests in the disputed domain name.

This Panel finds that the Complainant has made a case that the Respondent does not have Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a
rights or legitimate interests in the disputed domain name. The Respondent does not appear to be
commonly known by the name “pumaicolombia” or by any similar name. The Respondent has no connection

to or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

The Panel, based on the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

The disputed domain name was registered many years after the Complainant’s renowned trademarks were registered. In addition, owing to the substantial presence established by the Complainant worldwide, it is at the least very unlikely that the Respondent was not aware of the existence of the Complainant’s trademarks when registering the disputed domain name that is confusingly similar to the Complainant’s trademark.

The Respondent’s knowledge of the PUMA mark is particularly obvious, given that the PUMA trademark isdisplayed on the website at the disputed domain name.

In addition, by displaying the Complainant’s registered trademark on the Respondent’s website, the the website.

Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the PUMA trademark.

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The bad faith registration and use of the disputed domain name is also affirmed by the fact that, in this proceeding, the Respondent has not denied any of the assertions of bad faith made by the Complainant, and particularly the assertion that the goods sold on the Respondent’s website are fake.

Consequently, this Panel finds that the Respondent’s use of the disputed domain name, i.e. to resolve to a website where apparently fake PUMA-trademarked goods, are displayed, amounts to bad faith use.

Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using
the disputed domain name in bad faith. Therefore, 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 name, <pumaicolombia.com>, be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: February 17, 2022