The "PUMA" series of trademarks has been approved for registration in Taiwan since 1976 by Puma, a German company. The trademark designated for use in sports-related goods and services. However, the trademark name was registered as the domain name (puma.tw) by Company A. According to investigations, registrant A has not obtained any trademark with "PUMA" in Taiwan, nor has Puma (German company) authorized the registrant to use the "PUMA" trademark or domain name registration with it. Does Company A's move infringe the trademark rights of "PUMA"? Would it cause confusion and misidentification among related consumers?
We previously shared an article "Trademark names are registered as domain names. Could it be recovered?". The article lists in detail the criteria for judging whether the registration or use of a domain name infringes on the trademark rights of others, and the institution that handles domain name disputes. Friends who don't know the domain name dispute resolution standards and institutions yet could read this article first~
Now, let's take a look at the disputes of this case which the domain name: "PUMA" was registered by others~
▲ Is the disputed domain name the same as or similar to the complainant’s trademark and causing confusion?
Whether the complainant’s trademark is famous that isn't a requirement for the establishment of the complaint. However, the trademark or business name with higher popularity is usually more likely to cause confusion if others use the same or similar domain name.
The "PUMA" series of trademarks has been used for the marketing and continuous use of PUMA (German company) for many years. It has become a well-known trademark both in the world and domestically and has been confirmed by domestic judicial decisions. The main part of the disputed domain name (puma.tw) is "puma", which is compared with the "PUMA" trademark owned by PUMA (German company). Both have "puma", only the English letters are different in case. Domain names are shown in uppercase or lowercase, which doesn't hinder connection. Therefore, used the famous trademark "PUMA" by the registrant had made ordinary consumers and Internet users to misunderstand that the website indicated by the domain name has a certain degree of connection with German business Puma, causing confusion. Therefore, used the famous trademark "PUMA" by the registrant had made ordinary consumers and Internet users to misunderstand that the website displayed by the domain name has a certain degree of connection with PUMA (German company) and caused confusion.
▲ Did the registrant have rights or legitimate interests with respect to the disputed domain name?
The "PUMA" trademark is a well-known trademark both at home and abroad. When the registrant applied for registration of the disputed domain name, it was really difficult to judge that he didn't know the famous trademark. Naturally, it was difficult to determine that the registrant used the disputed domain name in good faith before receiving the notice of the dispute about the domain name. This violated the DN Dispute Resolution Policy article 5, paragraph 2, subparagraph 1: before receiving any notice of the Domain Name dispute from a third party or a Provider, the Registrant used in good faith.
In the re-examination, although the registrant claimed that "PUMA Digital Studio" was a legally registered and normally operating company. It had used the domain name in good faith and had a legitimate right. However, the registrant didn't mention any efforts he made to set up the theme marketing website. It was difficult to determine that the domain name was used in good faith and had the right or legitimate interest of the domain name by just copying the content of another webpage .
As for the registrant, he repeatedly emphasized that the disputed website was for internal employees, and has been declared to have no connection with PUMA (German company) and its affiliates. However, as mentioned above, registrants used "PUMA" as the main part of the domain name without authorization from PUMA (German company), that had made ordinary consumers and Internet users to misunderstand that the website displayed by the domain name has a certain degree of connection with PUMA (German company) and caused confusion. Objective fact that confuse and mislead them had happened. The statement didn't help to reduce misleading or avoid confusion and misidentification for consumers. It was still difficult to believe that was in favor of the registrant. Therefore, it was concluded that the registrant had no right or legitimate interest in the disputed domain name.
▲ Did the registrant register or use the disputed domain name maliciously?
According to the DN Dispute Resolution Policy article 3 of Taiwan Network Information Center: When applying to register of a Domain Name, the registrant shall disclose to the Registrar and warrant that, to the Registrant's knowledge, the Domain Name registered by it does not infringe on rights or interests of others. The registrant clearly known that "PUMA" was a well-known trademark of PUMA (German company), and still applied for registration as a domain name in text similar to the trademark. It was not only violated the registrant's obligation to inform TWNIC, but also had an improper attachment effect with the quality of the goods by the famous trademark. Therefore, the registrant's registration of the domain name was for profit. The intention was to confuse with the trademark of PUMA (German company). To lure or mislead Internet users to browse their website or other online addresses.
▲ Conclusion:
According to Article 70, paragraph 款, subparagraph 2 of the Taiwan Trademark Law: knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark, the trademark owner may exclusion of infringement in accordance with article 69.
Moreover, the reasons and evidences complained by the PUMA (German company) were in accordance with DN Dispute Resolution Policy article 5, paragraph 1: the Domain Name is identical or confusingly similar to a trademark(s), mark(s), personal name, business name, or other emblem(s) of the Complainant; The registrant must transferred the domain name (puma.tw) to the PUMA (German company) in accordance with the means of redress by the applicant’s appeal.
Related article
1. Trademark names are registered as domain names. Could it be recovered?
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