Puma SE v. Puma, Exports Pvt Ltd [WIPO Case No. D2021-1757]
1. The Parties
The Complainant is Puma SE, Germany, represented by RNA IP Attorneys, India.
The Respondent is Puma Exports Pvt Ltd, India, represented by Cylaw Solutions, India.
2. The Domain Name and Registrar
The disputed domain name <pumaexports.com> is registered with eNom, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On June 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 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 June 15, 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 amended Complaint on June 18, 2021.
The Center verified that the Complaint together with the amended 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 June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. The Response was filed with the Center on July 7, 2021.
The Center appointed John Swinson as the sole panelist in this matter on July 16, 2021. 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 well-known international sports footwear and apparel company based in Germany.
The Complainant owns many trademark registrations for PUMA including Indian trademark registration number 323053 in class 18 for bags made of leather, having a filing date of February 15, 1977. The earliest registration for PUMA dates back to 1948.
The Respondent is an Indian manufacturer and exporter. The Respondent makes small leather goods, such as wallets and passport covers, and when receiving a wholesale order, will export these products to certain countries in Europe including Germany. The Respondent was formed as an Indian company in June 1990 under the name Puma Exports and Import Pvt. Ltd. and changed its name to its current name in March 1996.
The disputed domain name was registered by the Respondent on September 2, 1998.
The website at the disputed domain name promotes the Respondent’s leather good products.
5. Parties’ Contentions
The Complainant makes the following submissions:
The Complainant is one of the world’s leading sports brands designing, developing, selling and marketing footwear, apparel and accessories. For over 65 years, the Complainant has established a history of making fast product designs for the fastest athletes on the planet.
The Complainant coined the term PUMA in 1948 and obtained a trademark registration at that time.
The Complainant’s well known trademark PUMA is registered in a number of countries around the world, including India.
The Complainant, on its own and through its subsidiaries worldwide, is famous for manufacturing one of the most sophisticated sportswear and athletic shoes in the world.
The Complainant’s consolidated sales for the financial year 2016 were EUR 3626.7 million. Singer Rihanna is the new face of the Complainant.
The Complainant has extensively used the PUMA trademark in India since 1982. The PUMA brand is ranked at position 5th in the Top 10 shoe brands of India. By virtue of extensive use, PUMA products are immensely popular in India. The Complainant also uses the ubiquitous medium of the Internet to render and advertise its products and services.
The Complainant has rights in the PUMA mark that predates the registration date of the disputed domain name.
The disputed domain name is nearly identical to the Complainant’s PUMA trademark, save for the word “exports” which does not serve to distinguish the disputed domain name from the Complainant’s trademark.
The Respondent registered the domain name in 1998, which is several decades after the Complainant invested millions of dollars in popularizing and seeking registration of the PUMA trademark and domain name <www.puma.com>.
The Respondent has used the mark PUMA in its entirety to attract internet users and consumers for commercial gain by abusing the goodwill and reputation associated with the Complainant’s PUMA trademark.
The Respondent has no right to use the Complainant’s well-known mark PUMA as a part of its domain name as the Complainant has not authorized any such use. Unlicensed, unauthorized use of the disputed domain name incorporating Complainant’s trademark is a strong evidence that the Respondent has no rights or legitimate interests.
The fame and prior use of the Complainant’s PUMA trademark makes it extremely unlikely that the Respondent created the domain name independently. Given the prominence and well-known stature of the Complainant’s PUMA products, it is incomprehensible that the Respondent was unaware of Complainant’s PUMA trademark at the time of registering the domain name.
The Respondent’s choice of domain name is not accidental and has clearly been made to derive unfair monetary advantage by offering PUMA branded products without authorization from the Complainant.
Further allegations made by the Complainant are set out in the section below titled Reverse Domain Name Hijacking.
The Respondent makes the following submissions:
The Respondent is a registered Company in India, which was incorporated on June 18, 1990 as Puma Exports and Import Pvt. Ltd. In March 1996, the Respondent was renamed to Puma Exports Pvt. Ltd.
The Respondent has been engaged in the business of manufacturing and exporting small leather products such as wallets, cardholders, passport covers, travel wallets and more similar products. This is evident not only from the existing active website at the disputed domain name but also on archive.org showing use since December 1998. The website clearly shows that the Respondent has been a supplier of high quality customized leather products and the word “PUMA” or “PUMA Exports” is nowhere used upon any products supplied.
The Respondent has been doing such export business with several companies globally for the last 31 years and exporting regular leather goods exports to Czech Republic, Poland, Germany and Russia through its logistic partner Dachser India Limited.
The word “puma” is a dictionary term to refer to a mountain lion, panther or cougar. This was the reason for adoption by the Respondent as its corporate identity, three decades ago. The Respondent was not the first business to have adopted the corporate identity as PUMA. There were 26 more companies that were formed with the brand / identity name as PUMA from 1979 until 1998 and many more were incorporated later.
The Complaint is contradictory, as it tries to claim usage since 1982 without providing any evidence in support, except for the “proposed to be used” trademarks. The Complainant’s trademarks (except one) that were applied for between 1977 until 2004 were proposed to be used.
The Complainant had established its first company in India in 2005, namely PUMA Sports India Pvt. Ltd. Moreover, an online search evidences that the Complainant entered in India in 2005-06 only.
The Complainant but never makes any reference to the popularity of the Complainant’s products in India in 1990, when the Respondent had adopted the name PUMA for the first time as its corporate identity.
The Complainant does not properly allege “bad faith registration” in relation to 1998, despite the Policy requiring both bad faith registration and bad faith use to be proved. The Respondent could not have been aware of the Complainant and its trademarks at the time of the registration of the disputed domain name.
Even the recognition of PUMA in India as a well-known mark has been very recent – since 2018 only. The Complainant falsely states that registration of the disputed domain name has been decades after the Complainant started using the trademark but fails to provide any evidence as to how the Respondent could have known about the Complainant or its brand in 1990s. The Complainant has provided no reasons or explanation as to why or how the Respondent could have known of the Complainant or its asserted rights in the year 1990. Actual knowledge of the Complainant and its trademark must exist for any finding against the Respondent.
The Complainant is represented by counsel, who is under an obligation imposed by paragraph 3(b)(xiii) of the Rules to undertake at least minimal due diligence before filing a complaint. The Complainant was already aware of the legitimate website at the disputed domain name and the name of the Respondent’s Incorporated Company. Since June 7, 2021, the Complainant has been serving other notices to the Respondent in a bid to harass a legitimate and a prior user.
The Compliant should be barred by the doctrine of Laches because the Complainant waited 22 years to initiate these proceedings – substantial, unreasonable delay by any measure and an eternity in “Internet time.”
This is not a case of cybersquatting, while the Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trademark disputes.
To prove bad faith registration, it must be shown that Respondent registered the disputed domain name not because of its common generic meaning, but rather specifically because it corresponded to a protected trademark.
During 1990 until 1998, the Respondent was already commonly known by the disputed domain name as business was being conducted under its corporate name. For several years now, the Respondent has been manufacturing and exporting custom made and custom logo embossed leather products for many reputed European companies. It is evident from the products displayed at the Respondent’s website that there has been no use of any brand name “PUMA”. Rather “PUMA Exports” is just a corporate identity.
Moreover, a long-standing director of the Respondent provided a sworn affidavit which stated that the Puma Exports name was selected by the Respondent because of the connection with the puma animal, that the Respondent did not have the Complainant in mind when selecting its corporate name, that the Puma Exports name was used as corporate branding and not as the branding for any product, and that the Respondent has no intention of disrupting the business of the Complainant or to confuse customers.
The Respondent requests that Panel issue finding of reverse domain name hijacking (RDNH) under Rule 15e since there is no basis for the claim and the Complainant (through its counsel) knew or should have known that before filing that Complaint, that they will not succeed in proving all three UDRP conditions. Further, where a complainant is represented by intellectual property counsel who even on rudimentary examination of Policy and its application in this area should have appreciated that complaint could not succeed, RDNH may be found. The claim was baseless.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 onus of proving these elements is on the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
A. Identical or Confusingly Similar
There is no doubt that the Complainant has trademark rights in PUMA. This is a famous trademark.
The disputed domain name includes the Complainant’s PUMA trademark in its entirety. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element of the Policy.
The disputed domain name is confusingly similar to the Complainant’s PUMA trademark, disregarding the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.
The Complainant has failed to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent’s company name is “Puma, Exports Pvt Ltd”. This is evident from the website at the disputed domain name, that clearly states on the homepage “Puma Exports ℗Ltd is a OHSAS 18001: 2007 certified company by SGS. We started our leather production unit in the year 1994.” There is also a logo on the homepage that has the words “PUMA EXPORTS PRIVATE LIMITED”.
Accordingly, it is clear from a simple review of the website at the disputed domain name, unless there would be clear evidence that this statement is fraudulent, that the Respondent has been commonly known by the disputed domain name.
The Complaint does not address this aspect of the case at all.
To assist the Panel in this case, the Respondent provided documents from the Reserve Bank of India, the Income Tax Department, the Indo-German Chamber of Commerce, the Council for Leather Exports, the Government of West Bengal and the Kolkata Municipal Corporation, from the period 1990 to 2021. These documents clearly reinforce the Respondent’s position that it has been commonly known by the disputed domain name.
The Complainant fails on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
The Respondent registered the disputed domain name in 1998, over twenty years ago.
The Complainant’s case on bad faith is that the PUMA trademark is so famous that it is inconceivable that the Respondent was unaware of this trademark in 1998, and that the Respondent registered the disputed domain name to seek “to take advantage of the goodwill accumulated by the Complainant, thus making it clear that Respondent fraudulently registered the alleged domain with dishonest intent.” The Complaint also asserts that the Respondent is selling PUMA branded leather goods.
It is however conceivable that the Respondent used the word PUMA in its company name in 1990, and then in its domain name in 1998, for reasons other than to take advantage of the Complainant and its reputation.
First, “puma” is a type of animal, a large cat. The Respondent states that it selected this term because it refers to an animal, not because of the Complainant.
Second, the Respondent is not selling PUMA branded leather goods. The goods are unbranded, or are custom-made and a branded with a customer’s logo.
Third, the Respondent is not selling sports apparel or footwear.
Fourth, the Respondent’s logo and trade dress is completely different to that of the Complainant.
Fifth, the Complainant’s Indian trademark registration does not appear to directly cover the Respondent’s goods.
Sixth, the Complainant did not enter the Indian market in a significant way until 2005.
The Panel finds that there is no evidence at all that suggests that the Respondent selected its company name or registered the disputed domain name to take advantage of the Complainant or the Complainant’s PUMA trademark.
There is no evidence that in 1998, the Respondent registered the disputed domain name in bad faith within the meaning of the Policy.
The Respondent is by all appearances a long-standing bona fide business.
There is no evidence that in the 23 years since 1998, the Respondent used the disputed domain name in bad faith within the meaning of the Policy.
The Panel does not make any finding as to whether or not the Respondent is infringing any of the Complainant’s trademark registrations. The Panel is not a court to decide upon civil disputes or trademark infringement. The jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Impact Bank v. Trace Hallowell, WIPO Case No. D2021-1135. The Respondent is not a cybersquatter.
The Complainant fails on the third element of the Policy in relation to the disputed domain name.
7. Reverse Domain Name Hijacking
The Respondent states that the Complainant is engaging in reverse domain name hijacking (RDNH).
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
RDNH is furthermore defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Panels have also referred to paragraphs 3(b)(xiii) and (xiv) of the Rules in addressing possible RDNH scenarios.
Prior panels have found RDNH where the complainant had clear knowledge of a lack of respondent bad faith such as registration of the disputed domain name well before the complainant acquired trademark rights.
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.
For the foregoing reasons, the Complaint is denied.
Date: July 30, 2021