Reebok International Limited v Client Care, Web Commerce

WIPO Case No. D2023-0277

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Reebok International Limited v. Client Care, Web Commerce
Communications Limited

Case No. D2023-0277

1. The Parties

The Complainant is Reebok International Limited, United States of America (“United States”), represented by

Authentic Brands Group, United States.

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

2. The Domain Name and Registrar

The disputed domain name <reebokportugaloutlet.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 20, 2023. On January 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2023, 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 February 3, 2023, 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 February 6, 2023.

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 February 7, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2023.

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The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on March 3, 2023. 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 Reebok International Limited, one of the world’s leading manufacturers of athletic footwear, apparel and sport, exercise and fitness equipment, and has advertised, marketed, promoted, distributed, and sold such worldwide products under its well-known and famous REEBOK trademark.

The Complainant owns numerous trademark registrations in many different jurisdictions around the world for

REEBOK, including the following registrations:

- Portuguese Registration No. 246325 for REEBOK, registered on September 11, 1991;

- Portuguese Registration No. 225595 for REEBOK, registered on October 17, 1988.

The disputed domain name was registered on August 22, 2021, and resolves to a website offering to what appears as counterfeit goods under the REEBOK trademark.

5. Parties’ Contentions

A. Complainant

The Complainant informs that it owns a vast portfolio of intellectual property rights, including more than 2,000 trademarks covering a wide variety of goods and services and a large portfolio of copyrights for images used in association with the advertising, marketing, and sale of Reebok-branded products globally.

Also, the Complainant argues that the disputed domain name consists of the reproduction of its trademark generic Top-Level Domain (“gTLD”) suffix “.com”.

Furthermore, the Complainant highlights that its REEBOK trademark is recognizable within the disputed domain name and that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

The Complainant alleges that the Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the REEBOK trademark or to apply for any domain name incorporating the REEBOK trademark, nor has the Complainant acquiesced in any way to such use or application of the REEBOK trademark by the Respondent.

Additionally, the Complainant says that there is no evidence of fair use in respect to the disputed domain name. On the contrary, the Respondent has been using the REEBOK trademark in the disputed domain name and on the corresponding website to promote its website for illegitimate commercial gains, by

operating a fake Reebok website offering counterfeit goods.

Furthermore, the Complainant argues that the disputed domain name was registered in bad faith since the
Respondent knew the Complainant and its well-known trademarks. Also, the Respondent registered the
disputed domain name at least 50 years after the Complainant established registered trademark rights in the
REEBOK mark.

The Complainant adds that the Respondent used a privacy protection service to mask its identity, which makes it difficult for the Complainant to contact the Respondent and amicably settle a domain dispute.

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Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 evidence demonstrates that the Complainant is the owner of several trademark registrations for
REEBOK, which is indeed considered as a well-known trademark.

The disputed domain name incorporates the famous Complainant’s trademark REEBOK in its entirety. The addition of the terms “Portugal” and “outlet” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

It is the general view among UDRP panels that the addition of merely dictionary, descriptive, or geographical terms to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110).

As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The TLD “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s trademark REEBOK.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in

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connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that
the disputed domain name was being used to mislead Internet users, by offering counterfeit products for sale
under the REEBOK trademark, aiming to profit.

Moreover, the construction of the disputed domain name itself is such to carry a risk of implied affiliation that cannot constitute fair use. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that the use of the disputed domain name, which incorporates the famous Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark REEBOK is registered by the Complainant in several jurisdictions and has been used since a long time. The disputed domain name entirely incorporates the Complainant’s trademark REEBOK and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s REEBOK mark is distinctive, well-known and is also considered a highly reputed trademark worldwide. Thus, a domain name that comprises such a well-known mark is undoubtedly suggestive of the registrant’s bad faith. In addition, the Panel notes that the disputed domain name includes

the terms “Portugal” and “outlet”, which in this case may serve as an additional evidence of the registration of the disputed domain name in bad faith since these terms give the idea that the disputed domain name refers to an authorized store of the Complainant in Portugal, also considering that the Complainant demonstrated
that the disputed domain name resolves to an online store offering counterfeit products. Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the
Complainant.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark REEBOK for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been 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, <reebokportugaloutlet.com>, be transferred to the Complainant.

/Mario Soerensen Garcia/
Mario Soerensen Garcia
Sole Panelist
Date: March 9, 2023