Reebok International Limited v Hui Xu

WIPO Case No. D2022-2743

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Reebok International Limited v. Hui Xu

Case No. D2022-2743

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 Hui Xu, China.

2. The Domain Name and Registrar

The disputed domain name <reebokfr.com> (the “Domain Name”) is registered with Name.com, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2022.

On July 27, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 the due date for Response was August 23, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 24, 2022.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 1, 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.

page 2

4. Factual Background

The Complainant is the proprietor of inter alia the following trademark registrations:

-	European Union (“EU”) trademark registration No. 000000373 for REEBOK, registered on June 10,
1998 for goods and services in classes 18, 25, and 28;
-	French trademark registration No. 97692182 for REEBOK, registered on August 18, 1997 for goods and services in class 35; and
-	French trademark registration No. 1692582 for REEBOK, registered on September 10, 1991 for goods and services in classes 14, 18, 25, and 28.

The Domain Name was registered May 23, 2022. The Domain Name resolves to a website in French

offering sport goods purporting to be the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, substantially, the following:

The Domain Name is identical or confusingly similar to the Complainant’s registered REEBOK trademark.

The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the REEBOK trademark nor to apply for any domain names incorporating the REEBOK trademark. The Respondent is not making a legitimate noncommercial or fair use of the Domain name. There is no evidence that the Respondent is using or plans to use the REEBOK trademark or the Domain Name incorporating the

REEBOK trademark for a bona fide offering of goods or services that doesn’t infringe the Complainant’s

intellectual property rights. On the contrary, the Respondent has actively been using the REEBOK

trademark in the Domain Name and on the website to which the Domain Name resolves (the “Domain Name

Website”) to promote its website for illegitimate commercial gains, more specifically, by operating a fake

Reebok website offering counterfeit Reebok goods. Such unauthorized use of the REEBOK trademark is
likely to trick consumers into erroneously believing that the Complainant is somehow affiliated with the
Respondent or endorsing its commercial activities while in fact, no such relationship exists. Further, the

Respondent has not been commonly known by the Domain Name.

The Domain Name was registered and is being used in bad faith. The Respondent was well aware of the

Complainant’s trademark at the time the Respondent registered the Domain Name on May 23, 2022. The

Complainant’s trademark is well-known around the world. Further, the Respondent registered the Domain

Name at least 50 years after the Complainant established registered trademark rights in the REEBOK mark.
More egregiously, the Respondent seems to be selling counterfeit Reebok goods on its website. The

Respondent has no reason to use the mark in the Domain Name other than to attract Internet users to its

website for commercial gain, especially since the Complainant’s website is “

B. Respondent

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

page 3

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is clearly established that the Complainant holds trademark rights in REEBOK, registered in the EU and

France.

The Domain Name incorporates the Complainant’s REEBOK mark in its entirety while adding “fr” and the

generic Top-Level Domain (“gTLD”) “.com”. According to the 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. In this case, the addition of “fr” does not prevent a finding of confusing similarity between

the Domain Name and the Complainant’s trademark. Further, it is well established that “.com”, as a gTLD, is

typically disregarded in the assessment of confusing similarity (see section 1.11.1 of the WIPO Overview

3.0).

Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which the

Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

Considering the similarities between the Domain Name and the Complainant’s REEBOK mark and the fact

that the Complainant has held registered trademark rights in REEBOK several years prior to the registration trademark. Further, products for which the REEBOK mark is registered are marketed under the Domain

of the Domain Name, it is clear that the Respondent had the Complainant and its REEBOK mark in mind
when registering the Domain Name. This notion is strengthened by the contents of the Domain Name

Name Website. The website is also in French, indicating that the Respondent, by using “fr” in the Domain

Name, intentionally has tried to make Internet users believe that the Domain Name Website constitutes an

official website for the Complainant’s online sales of products marketed under the REEBOK mark connected

to France. In addition, the Respondent has failed to provide a reply to the Complaint. The Respondent has
not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the REEBOK

trademark. It is clear that the Respondent intentionally has attempted to attract, for commercial gain,

Internet users to his/her website, by creating a likelihood of confusion with the Complainant’s mark as to the

source, sponsorship, affiliation, or endorsement of the website and of products on the website. The Panel

also notes that the addition of “fr” to the Complainant’s REEBOK mark in the disputed domain name in some

regard strengthens the likelihood of confusion since the addition could make Internet users believe that the

Domain Name Website constitutes an official website for the Complainant’s business relating to France.

Considering what has been stated above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith.

page 4

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 Domain Name <reebokfr.com> be transferred to the Complainant.

/Jonas Gulliksson/

Jonas Gulliksson

Sole Panelist
Date: September 15, 2022