DECISION

 

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

Claim Number: FA2401002080459

 

PARTIES

Complainant is Reebok International Limited ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <reebok-us.com>, <reebok-factoryoutlet.com> and <reebokuk-sale.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 23, 2024; Forum received payment on January 23, 2024.

 

On January 24, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <reebok-us.com>, <reebok-factoryoutlet.com> and <reebokuk-sale.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 24, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@reebok-us.com, postmaster@reebok-factoryoutlet.com and postmaster@reebokuk-sale.com. Also on January 24, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 14, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.)  as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Reebok International Limited ("Complainant") is the owner of the world-famous REEBOK brand. Reebok is 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 under its well-known and famous REEBOK trademark ("REEBOK Mark"). The disputed domain names,<reebok-us.com>, <reebok-factoryoutlet.com> and <reebokuk-sale.com>, are confusingly similar to Complainant's REEBOK trademark.

 

Respondent has no rights or legitimate interests in respect of the domain.

names.

 

The domain names were registered and are being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Reebok International Limited ("Complainant") is the owner of the world-famous REEBOK brand. Reebok is 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 under its well-known and famous REEBOK trademark ("REEBOK Mark"). The REEBOK brand is supported by a vast portfolio of intellectual property rights, including a global portfolio of 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 (collectively, the "REEBOK IP Rights"). More particularly, Complainant owns the following trademarks:

 

Vector design logo- Reg. No. 1848848 in Classes 18 and 25.

REEBOK- Reg. No. 1133704 in Class 25.  

REEBOK- Reg. No. 5530372 in Class 25.  

REEBOK- Reg. No. UK00001081967 in Class 25.  

REEBOK Design- Reg. No. UK00901122761 in Class 25.

 

The disputed domain names, <reebok-us.com>, <reebok-factoryoutlet.com> and <reebokuk-sale.com>, are confusingly similar to Complainant's REEBOK trademark. The domain names consist of the "www." prefix followed by:

 

i.       Complainant's trademark "Reebok" (not case sensitive), a dash, the geographic identifier "US" (not case sensitive);

ii.       Complainant's trademark "Reebok" (not case sensitive), a dash, the descriptive terms "factory outlet" (not case sensitive);

iii.       Complainant's trademark "Reebok" (not case sensitive), the geographic identifier "UK" (not case sensitive), a dash, and the descriptive term "sale" (not case sensitive);

 

and the generic suffix ".com".

 

Respondent registered the disputed domain names on August 16, 2023.

 

Respondent has no rights or legitimate interests in respect of the domain.

names. Respondent has not been licensed or authorized by Complainant to use the REEBOK trademark. There is no evidence that the Respondent is using or plans to use the REEBOK trademark or the domain names incorporating the REEBOK trademark for a bona fide offering of goods or services that doesn't infringe REEBOK's intellectual property rights. On the contrary, Respondent has been actively using the REEBOK trademarks in the domain names and on the physical website to promote its website for commercial gains. Such unauthorized use of the REEBOK trademarks is likely to mislead consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its commercial activities.

 

        The domain names were registered and are being used in bad faith. Respondent was aware of Complainant's trademark at the time Respondent registered the domain names. Complainant's trademarks are well-known around the world.

 

Respondent is trying to pass off the resolving websites as Complainant's website to sell competing and unauthorized goods. Respondent uses the REEBOK trademarks as well as images of products bearing the REEBOK Trademarks without any authorization.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in the REEBOK Mark. The disputed domain names, <reebok-us.com>, <reebok-factoryoutlet.com> and <reebokuk-sale.com>, are confusingly similar to Complainant's REEBOK Mark.

 

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in respect of the domain.

names. Respondent has not been licensed or authorized by Complainant to use the REEBOK trademark. There is no evidence that the Respondent is using or plans to use the REEBOK trademark or the domain names incorporating the REEBOK trademark for a bona fide offering of goods or services that doesn't infringe REEBOK's intellectual property rights. Respondent is trying to pass off the resolving websites as Complainant's website to sell competing and unauthorized goods. Respondent uses the REEBOK trademarks as well as images of products bearing the REEBOK Trademarks without any authorization.

 

Registration and Use in Bad Faith

The domain names were registered and are being used in bad faith. Respondent was aware of Complainant's trademark at the time Respondent registered the domain names.

 

Respondent is trying to pass off the resolving websites as Complainant's website to sell competing and unauthorized goods. Respondent is intentionally trying to create a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement. Such use of a domain name constitutes bad faith, See Urban Outfitters Inc. v. Super Privacy Service LTD c/o Dynadot / Domain Administrator, Domain Name Corporation, WIPO Case No. D2022-2928 citing Gilead Sciences, Inc. v. Adewale Tokosi, WIPO Case No. D2021-0961.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <reebok-us.com>, <reebok-factoryoutlet.com> and <reebokuk-sale.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: February 28, 2024