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adidas-Salomon AG v. Vincent Stipo [2001] GENDND 943 (14 May 2001)

The Complainant is adidas–Salomon AG, Adi-Dassler-Strasse 1-2, 91074 Herzogenaurach,Germany.

It is represented by Mr Gregor S.P.Vos, Nauta Dutilh P.O. Box 7113, 1007 JC, Amsterdam, The Netherlands.

The Respondent is Vincent Stipo, 3627 Legato Court, Phillips Ranch CA 91766, USA. The Respondent is not represented and has not filed any Response (see below).

The domain names at issue are <adidas3stripe.com> and <adidasadidasadidas.com>.

The Registrar is Register.com, Inc. 575 8^th Avenue, 11^th Floor, New York, NY 10018, USA.

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") by email on March 14, 2001, and in hard copy on March 16, 2001.

The Center acknowledged receipt of the complaint on March 23, 2001.

3.2 On March 21, 2001, a request for Registrar verification was transmitted by the Center to Register.com requesting it to:-

- confirm that a copy of the Complaint had been sent to it by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b);

- confirm that the person identified as the Respondent is the current registrant of the domain names;

- provide full contact details i.e. postal address(es), telephone number(s), facsimile number(s), email address(es) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact and administrative contact for the domain names;

- confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") was in effect;

- indicate the current status of the domain names.

3.3 On March 22, 2001, Register.com sent an e-mail to the Center indicating as follows:-

- Register.com had received a copy of the Complaint from the Complainant;

- Register.com is the registrar of the domain names <adidasadidasadidas.com> and <adidas3stripe.com>;

- Vincent Stipo (of the above address) is shown as the "current registrant" of the domain names. He is also the administrative contact for both domain names;

- the technical and zone contact for <adidas3stripe.com> is shown as GreatDomains.com, 19833 Kinzie Street, Chatsworth, CA 91311, USA;

- the technical and zone contact for <adidasadidasadidas.com> is shown as Register.com, Domain Registrar, 575 8^th Avenue, 11^th Floor, New York, NY 10018, USA;

- Register.com’s Services Agreement is in effect and it currently incorporates the Policy;

- the domain name registrations <adidas3stripe.com> and <adidasadidasadidas.com> are currently in "active" status.

3.4 Having verified that the Complaint satisfied the following requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") the Center, on March 23, 2001, transmitted by post courier, facsimile and email a notification of the Complaint and of the commencement of administrative proceedings to the Respondent. A copy of the Complaint was also emailed to Register.com and ICANN.

3.5 WIPO verified that the Complaint satisfied the Rules and Supplemental Rules and that payment was properly made. The Panel is satisfied that this is the case.

3.6 Despite the Complaint being properly notified to the Respondent in accordance with paragraph 2(a) of the Rules, the Respondent had filed no response by April 11, 2001 or later. A notice of Respondent Default was issued by the Center to the Respondent on April 17, 2001 by email.

3.7 The Complainant elected to have its Complaint resolved by a single member panel; it has duly paid the amount required of it to the WIPO Center.

3.8 On April 26, 2001, the Center notified the parties that an Administrative Panel, composed of a single member, Nick Gardner, had been appointed. A statement of acceptance and declaration of impartiality and independence has been filed by the Panelist.

3.9 No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel’s Decision was therefore May 9, 2001.

The Complainant owns the following trade marks and service marks:

ADIDAS
Madrid Protocol Registration
Registration number: E58770
Issued: 24 July 1989

adidas
Madrid Protocol Registration
Registration number: 487580
Issued: 22 October 1984

THE BRAND WITH THE THREE STRIPES
US registration
Registration number: 1674229
Issued: February 4, 1992

graphic (sports shoe with three stripes on it)
Madrid Protocol Registration
Registration number: 426376
Issued: 29 October 1996

graphic (sports shoe with three stripes on it)
Benelux registration
Registration number: 001339
Issued: 25 February 1971

graphic (sports shoe with three stripes on it)
Benelux registration
Registration number: 348758
Issued: 19 December 1977

graphic (three leaves with three stripes)
Madrid Protocol Registration
Registration number: 469145
Issued: 14 July 1982

graphic (three leaves with three stripes)
Madrid Protocol Registration
Registration number: 498395
Issued: 17 October 1985

adidas EQUIPMENT [plus graphic (3 stripes)]
Madrid Protocol Registration
Registration number: 566295
Issued: 26 February 1991

The Complainant is the very well known internationally active company that produces sports and fitness products such as athletic footwear, sports apparel and sports equipment like bags and balls. Proof of ownership of these registrations is furnished in Exhibits 3 to 11 of the Complaint.

The Complainant alleges:

(a) The domain names at issue are confusingly similar to the Complainant’s trade and service marks because the domain name incorporates the Adidas mark exactly and uses the Adidas mark as its most salient feature. It also incorporates the phrase "3stripe". The Complainant has registered several three stripe figurative trade marks and three stripe word trade marks. The three stripes are a characteristic feature in many of the Complainant’s figurative and word trade marks and, because of its extensive and long continued world wide use, have become a well known indication of origin of the Complainant’s products;

(b) The Respondent has no rights or legitimate interests with respect to the domain names because the Respondent did not use, or make demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services. Until notification of the dispute, the domain names have not been used by the Respondent. It is evident that the Respondent did not make any relevant preparations to offer a bona fide service or goods in connection with the domain names because they had been registered almost a year ago (March 30, 2000 and

April 2, 2000 respectively). Further the Respondent has not been and is not commonly known by the domain names. In response to a letter sent by the Complainant’s counsel, the Respondent claims (in an email dated

September 2, 2001) that his intentions were not to sell any Adidas type website names, but rather the names were to be associated with two youth soccer teams which he coached, their names being "adidasadidasadidas" and "adidas3stripe". The Respondent also states "Please be advised that my intentions are not to sell any Adidas type website names". However, the Respondent is offering to sell the domain names at the internet domain name auction site <afternic.com>.

(c) In addition, the Respondent is not making legitimate non-commercial or fair use of the domain names, without intent for commercial gain or to misleadingly divert customers or tarnish the trade mark Adidas. The Respondent is making no use of the domain names, other than offering them for sale at the domain name auction site.

(d) The domain names were registered and have been used in bad faith because:

(i) The Complainant enjoys substantial sales of its Adidas sports and fitness products in over 160 countries;

(ii) By virtue of the Complainant’s long standing use of the trade marks and service marks, the Complainant has established significant brand awareness and enjoys considerable goodwill and fame;

(iii) The Respondent is not a licensee or distributor of the Complainant. The Respondent does not have any consent, licence or other authorisation for the use or registration of the domain names;

(iv) The Respondent has never been commonly known by the domain names at issue;

(v) The Respondent is not making any legitimate non-commercial or fair use of the domain names at issue;

(vi) The circumstances clearly indicate that the domain names were registered or acquired by the Respondent primarily for the purpose of selling, renting or otherwise transferring the domain names to the Complainant or other competitors of the Complainant. This is due to the fact that the domain names are offered for sale, together with other trade marks at <afternic.com>. A total of 19 domain names are offered for sale on that site by the Respondent.

(vii) There are circumstances indicating that the Respondent has registered the domain names in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct;

(viii) The Respondent owns numerous domain names which correspond to third party trade marks and which he is offering for sale at the domain name auction site, <afternic.com>. Domains offered include <nikenikenike.com> and <wwfhulkhogan.com>. It is therefore clear that the Respondent has engaged in a pattern of registering domain names which reflect several well known trade marks.

The Respondent has made no submissions.

6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In light of this material and matters that are (on the evidence) not challenged, the Panel finds as set out below.

6.2 The domain name <adidas3stripe.com> is, in the judgement of the Panel, confusingly similar to the Complainant’s trade marks and service marks. The description that appears on the <afternic.com> auction site for <adidas3stripe.com> is <adidas3stripe> is the next best thing to <adidas.com>.

6.3 The domain name <adidasadidasadidas.com> is also confusingly similar to the Complainant’s mark. Further, on the domain name auction site <afternic.com>, the domain name is described as "Adidas Sports Equipment".

6.4 The Respondent has no rights or legitimate interests in the domain name at issue. Although the Respondent has made no submissions, conclusions can be drawn from the email from the Respondent (attached at Annex 15 to the Complaint) to the Complainant’s counsel dated 9 February 2001 which provides as follows:

6.4 This account appears manifestly improbable and is not supported by any further evidence. The Complainant’s evidence show the Respondent is offering the domain names for sale on the <afternic.com> auction site – the minimum bid for <adidas3stripe.com> is stated as $1,000 and the minimum bid for <adidasadidasadidas.com> is $500 (see Annex 18 to the Complaint). This is more than what the Respondent’s out-of-pocket expenses directly related to the purchase of the domain names would be.

6.5 The evidence also shows the Respondent engaged in a pattern of such registrations – there is a list of 19 domain names shown on the AFTERnic site headed "Vincent Stipo’s Showcase" which is another indication of his commercial intent.

6.6 The Panel therefore considers that the Respondent has registered and used the domain names <adidas3stripe.com> and <adidasadidasadidas.com> in bad faith in that the evidence establishes the Respondent has registered the names primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name.

In light of the above findings, the Panel’s decision is as set out below.

7.1 The domain names registered by the Respondent are identical or confusingly similar to the trade marks and service marks to which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy;

7.2 The Respondent has no rights or legitimate interests in respect of the domain names within the meaning of paragraph 4(a)(ii) of the Policy; and

7.3 The Respondent's domain names have been registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. In particular they were registered primarily for the purpose of selling them to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent's out of pocket costs directly related to the domain names (see paragraph 4(b)(i) of the Policy).

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <adidas3stripe.com> and <adidasadidasadidas.com> be transferred to the Complainant.

Nick Gardner
Sole Panelist

Dated: May 14, 2001