Domain owner has a portfolio of animal-themed domain names.
Shoe and athleticwear company Puma has lost a cybersquatting claim it filed against the name puma.com.mx.
.Mx is Mexico’s country code. Puma is active in the country and uses the subdomain mx.puma.com.
Gil Rodriguez, who lives in Miami, registered the domain for potential resale. He said he maintains a portfolio of domain names, including many that are animal names.
A notice currently on puma.com.mx states that he owns dogs.com.mx, eagle.com.mx, gorilla.com.mx, and many more animal names in both English and Spanish.
World Intellectual Property Organization panelist Luis C. Schmidt wrote (translated):
What emerges from the record, in this case, is a business model consisting of maintaining a portfolio of domain names composed of dictionary words, including animal names, without it being established that this model is specifically directed against the Complainant or against trademark owners generally, or that the Respondent actively sought to offer the disputed domain name to the Complainant or its competitors.
Schmidt determined that Puma failed to show the domain was registered and used in bad faith and that Rodriguez lacked rights or legitimate interests in the domain name.
A few weeks ago, when I received the confirmation email regarding the domain dispute—and saw that the German law firm GÖHMANN Lawyers would be handling the case on Puma’s behalf—I frankly considered it a lost cause; I didn’t even think about responding. It was thanks to Jesus Navarro—a colleague, friend, and expert on .mx domains—that I realized the German brand shouldn’t necessarily have rights superseding those of the other 61 individuals or companies that have registered trademarks containing the term “Puma” in Mexico. I am glad I responded and managed to keep this domain in my portfolio.
The curious thing is that Puma didn’t try to buy the domain—which would have been an investment. Instead, they chose to spend tens of thousands of euros on what turned out to be a loss. I know that’s a drop in the bucket for a company like that, but this situation—which is starting to become a trend—is now on the record.
Congratulations on winning, Gil!