WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Puma SE v. Henrik Tess

Case No. D2021-3706

1. The Parties

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

The Respondent is Henrik Tess, France.

2. The Domain Name and Registrar

The disputed domain name <puma-chile.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 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 November 10, 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 November 10, 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2022.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 21, 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. On February 18, 2022, the panelist issued a Procedural Order requesting the Complainant to provide specific evidence, the Complainant responded to the Procedural Order on February 23, 2022, the Respondent did not reply to the Procedural Order. The Decision due date was extended to March 4, 2022.

4. Factual Background

The Complainant, PUMA SE, is a German multinational corporation that designs and manufactures athletic and casual footwear, apparel, and accessories. The Complainant is the owner of multiple trademarks for the mark PUMA which have been registered worldwide in different classes and for different goods and services. According to an extract of the WIPO Global Brand Database submitted by the Complainant as Annex 4, these include but are not limited to:

International Registration No. 175859 for PUMA, registered on March 26, 1954 in International Class 25.
International Registration No. 350539A for PUMA, registered on October 18, 1968 in International Class 28.
International Registration No. 369917 for PUMA, registered on May 29, 1970 in International Classes 18, 25, and 28.
International Registration No. 437626 for PUMA (figurative), registered on April 12, 1974 in International Classes 18, 25, and 28.
International Registration No. 480708 for PUMA (figurative), registered on September 30, 1983 in International Classes 18, 25, and 28.
International Registration No. 482659 for PUMA (figurative), registered on December 12, 1983 in International Classes 9, 10, 12, 37, and 41.
International Registration No. 482069 for PUMA (figurative), registered on January 4, 1984 in International Classes 22, 23, and 28.
International Registration No. 485391 for PUMA, registered on March 19, 1984 in International Classes 6, 16, 24, 26, and 27.
International Registration No. 582886 for PUMA (figurative), registered on July 22, 1991 in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, and 42.

The disputed domain name was registered on June 9, 2021 (well after the Complainant secured rights to the trademarks). The disputed domain name is not currently used.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the three elements specified in paragraph 4(a) of the Policy are present. The three elements being: (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.

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

The Complainant contends that the first part of the disputed domain name, “puma”, is identical to its trademarks comprising the mark PUMA. The second part of the disputed domain name, “chile”, is presented as a separate word and refers to the country Chile. The Complainant claims that in the context of a domain name, the addition of the name “Chile” should be understood as an intention to refer to a local country version of the website “puma” and this addition is therefore merely descriptive and not distinctive. Finally, the Complainant submits that this means that the relevant part with respect to a risk of confusion is “puma” which is identical to the trademark of the Complainant.

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that before any notice to the Respondent of this dispute, there was no evidence of the Respondent's use of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. In contrast, the Complainant mentions, although this is currently no longer the case, the disputed domain name used to resolve to an online store website selling fake goods from the Complainant.

In addition, the Complainant alleges, the Respondent has not been commonly known by the disputed domain name. Only fake goods of the Complainant were offered for sale on the website to which the disputed domain name resolved previously. Therefore, the Complainant points out, the Respondent was creating the impression that original goods of the Complainant and directly from the Complainant were offered. Because of this misdirection, the Complainant concludes, the Respondent could not be commonly known by the disputed domain name.

Finally, the Complainant claims that the disputed domain name is an infringement of its aforementioned trademarks. The Respondent sold fake goods and may offer them again in the future. The Complainant then contends that the Respondent uses its marks illegally. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent intents to use the disputed domain name for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark of the Complainant.

(iii) the disputed domain name has been registered and is being used in bad faith

The Complainant alleges that the disputed domain name used to resolve to a website that, through geo-blocking, was only available in Chile and was designed in the same layout as the official PUMA website. The Complainant contends that only fake products were sold on the website and that the Respondent gives the impression that he is an official representative of the Complainant which in fact is not the case.

This shows, according to the Complainant, that the Respondent has registered the disputed domain name in bad faith primarily for the purpose of disrupting the business of the Complainant. The Complainant also contends that, by using the disputed domain name in the manner described above, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website 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

The Panel finds that it has jurisdiction to hear this dispute as the Policy has been incorporated by reference into the registration agreement between the Registrar and the Respondent.

The Panel notes that while the Respondent has been duly notified, he did not reply to the Complainant’s contentions within the time period established by the Rules. Pursuant to paragraph 14 of the Rules the Panel shall nonetheless proceed to a decision on the Complainant’s complaint and it may draw such inferences from the Respondent’s failure to respond as it considers appropriate.

Paragraph 4(a) of the Policy requires that in order for its complaint to succeed, the Complainant must prove that the following three elements are present:

(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.

The above three elements will each be discussed in further detail below.

A. Identical or Confusingly Similar

The Complainant is required to establish: (1) that it owns rights in a trademark or service mark, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

Firstly, the Panel finds that the Complainant has clearly evidenced that it owns registered trademark rights to PUMA. The Panel is satisfied with the evidence provided in support of the existence of trademarks comprising the word “Puma”. Also, while most of the trademarks listed are figurative, the dominant portion of these trademarks is the word “Puma” and in fact trademark registrations comparing the (alpha-numeric) domain name and the textual components of the relevant mark prima facie satisfy the requirement that a complainant shows “rights in a mark”. Furthermore, the Complainant has proven that it also owns word marks in the word “Puma” in multiple jurisdictions globally and in different International Classes. Finally, it should be noted that paragraph 4(a)(i) of the Policy does not set minimum requirements as to the jurisdiction(s) of the trademarks a complainant relies on, nor as to the number, nature or scope of protection of such trademark(s).

Secondly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks since the disputed domain name contains the trademarked word “puma” as its core recognizable component. The other word “chile” will indeed likely be perceived as referring to the country Chile and, especially because it also has been separated by a hyphen “-”, will indeed likely be read separately from the word “puma”. In all events, as the trademark PUMA is recognizable within the disputed domain name, the addition of “chile” does not prevent the Panel’s finding of confusing similarity under the first element. It is a well-established view of UDRP panels, with which the Panel agrees, 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 (see for instance: Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384; BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284).

Finally, as for the applicable generic Top-Level Domain (“gTLD”), i.e., the suffix “.com”, the Panel holds that this can be disregarded under the first element confusing similarity test (CANAL + FRANCE v. Franck Letourneau, WIPO Case No. DTV2010-0012; Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that shall demonstrate a right or legitimate interest:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is a well-established view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by a complainant is generally sufficient to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that a respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

The Panel notes that the Respondent has not responded to any of the Complainant’s contentions, let alone submitted evidence to the contrary, and that, pursuant to paragraph 14 of the Rules, the Panel may draw such inferences from the Respondent’s failure to respond as it considers appropriate. In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case.

The Panel agrees with the Complainant that there is no evidence that the Respondent uses the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent has been commonly known or trading as “Puma”.

In conclusion, however, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy non-exhaustively lists four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant has relied on the circumstances described under paragraph 4(b)(iii) and (iv) of the Policy in the Complaint and provided an undated screenshot of the website which, the Panel understands, the disputed domain name previously resolved to. The Panel notes that the website in the screenshot displays the Complainant’s figurative and word PUMA trademarks, presumably without the Complainant’s authorization (even if that website is not necessarily using the same layout as the official PUMA website).

According to paragraph 4(a) of the Policy, the Complainant has the burden to prove that each of the three elements listed there are present, which includes the element discussed here: the registration and use of the disputed domain name in bad faith. The fact that the Respondent has failed to submit a response to the Complaint does not change this. It is a well-established view of UDRP panels, with which the Panel agrees, that the Respondent’s default is not necessarily an admission that the Complainant’s claims are true, nor should it automatically result in a decision in favor of the Complainant (e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413).

Pursuant to paragraph 14 of the Rules, the Panel may nonetheless draw such inferences from the Respondent’s failure to respond as it considers appropriate. While the Panel finds the presented evidence meagre, in the absence of a response from the Respondent it is sufficient to support a conclusion of bad faith registration and use of the disputed domain name for the following reasons.

The Panel will first discuss the Respondent’s registration of the disputed domain name. The Panel believes that the Respondent knew or, at least, should have known at the time of registration that the disputed domain name included the Complainant’s abovementioned trademarks. Knowledge of the PUMA trademarks may be inferred from the fact that these trademarks have been registered in many countries and existed for a long time prior to the Respondent’s registration of the disputed domain name (e.g., SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092 and American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950). The previous use of the disputed domain name for a website that displayed without authorization the Complainant’s PUMA trademarks is a further indicator of this.

As for the use of the disputed domain name, it should be noted that, according to the Complainant, the disputed domain name is currently not being used. It is however a well established view of UDRP panels, including the panels in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. The Panel agrees with this view and is of the opinion that the following circumstances provided by the Complainant show that the disputed domain name is being used in bad faith.

The Complainant’s numerous PUMA trademarks globally predate the registration of the disputed domain name by many years. Therefore, and in the absence of any evidence of current or future good faith use of the disputed domain name by the Respondent, the Panel finds that it can be inferred that the disputed domain name is maintained for future bad faith use. This is further supported by the fact that the disputed domain name previously resolved to a website that displayed without authorization the Complainant’s figurative and word PUMA trademarks to attract, for commercial gain, Internet users to its website (Paragraph 4(b)(iv) of the Policy).

In light of the above, the Panel finds that the disputed domain name was registered and is being used by the Respondent 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, <puma-chile.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: March 4, 2022