Company makes “incorrect or misleading statements” in cybersquatting dispute.
Sportswear company Puma SE tried to reverse domain name hijack the domain name PumaExports.com, a World Intellectual Property Organization panelist has determined.
Puma Exports was incorporated in India in 1990 and registered the domain in 1998. It sells customized leather products.
Panelist Josh Swinson determined that Puma failed to make even a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It also failed to show the domain was registered and used in bad faith.
Swinson’s reverse domain name hijacking finding is lengthy, but worth publishing because of the seriousness of the Complainant’s misleading case. The Complainant seems to have argued that the domain owner was selling the Complainant’s products or counterfeits, which is not the case.
…The Complainant, a large multinational corporation, was represented by legal counsel. The Complainant owns a world-famous trademark. The Complainant is entitled to enforce its trademark rights and to push the penumbra of its protection, but the Complainant is not entitled to file a misleading complaint.
The Complaint included the following incorrect or misleading statements:
“The Respondent is not and has never been known by the PUMA mark/name or by any similar name.”
“The alleged domain www.pumaexports.com is being used by the Respondent to illegally offer the products under the brand PUMA.”
“The evidences filed as Annexure 9 i.e., extracts from Respondent’s website at www.pumaexports.com clearly demonstrates the illegal activities wherein Respondent is offering wallets, belts etc. using the Complainant’s registered trademark PUMA.”
“The Respondent has wrongfully registered the domain name to make illegitimate gains by providing access to infringing PUMA materials for valuable consideration to buyer/s.”
As is clear from the Respondent’s website, the Respondent is known by the PUMA name. Further, Annexure 9 in the Complainant does not in any way demonstrate that the Respondent’s products are branded as PUMA products. The Respondent’s company name includes the word PUMA, but the products themselves are clearly unbranded products or are custom logo embossed leather products made for reputable companies (e.g., for Subaru). There is nothing clearly illegal about the Respondent’s activities.
The Complaint also makes serious allegations against the Respondent, that are unsupported or exaugurated. For example:
“There are no honest business activities carried out by the Respondent through the nearly identical/deceptively similar domain name.”
“… there is no credible legitimate reason for the Respondent to have chosen the domain name in question. The Respondent’s purpose in choosing the disputed domain name was plainly to use fame of the Complainant’s PUMA mark to generate web-traffic and to confuse internet users who might be looking for the Complainant and their famous products.”
“The Respondent’s registration and use of the domain name seeks to take advantage of the goodwill accumulated by the Complainant, thus making it clear that Respondent fraudulently registered the alleged domain with dishonest intention.”
“The evidence submitted by the Complainant overwhelmingly supports the conclusion that the Respondent had registered and is using the domain name in bad faith.”
“The Respondent’s choice of domain name is clearly fraudulent and with complete knowledge that such adoption is unauthorized.”
The tenor of the Complaint is that the Respondent is a dishonest and fraudulent company is selling pirated or infringing Puma products, which at best is a massive overstatement of the Complainant’s case and at worse a false and misleading allegation. A complainant should have clear evidence before alleging dishonesty or fraud, there is no such evidence here.
In these circumstances, the panel finds the Complainant guilty of RDNH.
RNA IP Attorneys represented the Complainant. Ankur Raheja of Cylaw Solutions represented the domain name owner.
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