WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reebok International Limited v. park, simon (kwang-ho), Jad Corporation
Case No. DPH2017-0007
1. The Parties
The Complainant is Reebok International Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Betita Cabilao Casuela Sarmiento, Philippines.
The Respondent is park, simon (kwang-ho), Jad Corporation of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <reebok.com.ph> (the "Domain Name") is registered with DotPH (the "Registrar").
3. Procedural History
The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2017 and in hard copy on October 2, 2017. On September 22, 2017, the Center transmitted by email to DotPH a request for registrar verification in connection with the Domain Name. On September 25, 2017, DotPH 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 .PH Uniform Domain Name Dispute Resolution Policy ("phDRP" or the "Policy"), the Rules for .PH Uniform Dispute Resolution Implementation Rules (the "Rules"), and the WIPO Supplemental Rules (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 27, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 9, 2017. 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 a company located in the United Kingdom that was acquired by the German company Adidas AG in 2005. It is a global brand that creates and markets sports and lifestyle products, in particular athletic shoes. The Reebok name was first used by a related company to the Complainant in 1958, being a derivation of the word "rhebok", a term to describe a gazelle in Africa.
The Complainant has held registered trade marks consisting of the word "reebok" (the "REEBOK Mark") all around the world and in particular, since 1991 in the Philippines and since 1988 in the Republic of Korea, the location of the Respondent.
The Domain Name, <reebok.com.ph>, was registered on September 29, 1999. It does not currently resolve to any website and there is no evidence that it has ever been used for any purpose. The Respondent is or has been the owner of a number of .ph domains that correspond to well-known trade marks owned by third parties, including <philips.com.ph>, <philips.ph>, <vodafone.com.ph>, <gucci.com.ph>, and <hyundai.com.ph>.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's REEBOK Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the REEBOK Mark having registered the REEBOK Mark in various countries around the world including the Philippines, Republic of Korea and United Kingdom. The Domain Name is confusingly similar to the REEBOK Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the REEBOK Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose as the Domain Name has never redirected to an active site. The Respondent does not have a trade mark registration in the Philippines or Republic of Korea for the REEBOK Mark.
The Domain Name was registered and is being used in bad faith. The REEBOK Mark is famous, the Respondent has no rights to the REEBOK Mark and the Respondent has engaged in several acts where it has registered and sometimes sold .ph domain names corresponding to well-known trade marks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the REEBOK Mark, having registered the REEBOK Mark as a trade mark in the Philippines and the Republic of Korea, the location of the Respondent. As the ".com.ph" country-code Top-Level Domain ("ccTLD") and Second-Level-Domain may be discarded in considering the identity or confusing similarity between a domain name and a mark, the Domain Name is identical to the REEBOK Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"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 legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers."
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the REEBOK Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, rather it appears that the Domain Name has been unused for the 17 years since registration.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line 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. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Complainant (trading under the REEBOK Mark) was a well-known enterprise in 1999 with its REEBOK Mark having been registered for some years in the Philippines and the Republic of Korea. Furthermore the REEBOK Mark is a coined mark with no descriptive meaning (the African gazelle being spelt "rhebok"). The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. The registration of the Domain Name in awareness of the Complainant and any rights it had at the time in the REEBOK Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
Given the reputation of the Complainant, the fact that the Domain Name is identical to the Complainant's REEBOK Mark, and the lack of any apparent use of the Domain Name in the 17 years in which it has been registered, the Panel finds that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its REEBOK Mark in a corresponding domain name. The evidence provided by the Complainant shows that the Respondent is or has been the owner of domain names including <philips.com.ph>, <philips.ph>, <vodafone.com.ph>, <gucci.com.ph>, and <hyundai.com.ph>. This evidence is sufficient to show a pattern of conduct in registering .ph domain names in order to prevent trade mark holders from reflecting their marks in a corresponding .ph domain name. The Policy, paragraph 4(b)(ii), provides that this circumstance is evidence of registration and use of a domain name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <reebok.com.ph>, be transferred to the Complainant.
Date: November 12, 2017