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LCIA (London Court of International Arbitration) v. Wellsbuck Corporation [2005] GENDND 349 (2 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adidas-Salomon AG v. Digi Real Estate Foundation

Case No. D2004-1079

1. The Parties

1.1 The Complainant is adidas-Salomon AG, a corporation duly organised and existing under the laws of Germany, having its principal place of business in Herzogenaurach, Germany (“adidas”).

1.2 The Respondent is Digi Real Estate Foundation, a business located in, Panama City, Panama (“Dref”).

2. The Domain Names and Registrar

2.1 The domain names, the subject of this complaint are <adidas1.com>, and <adidasone.com>.

2.2 The Registrar of these domain names is eNom, Inc.

3. Procedural History

Issuance of Complaint

3.1 The complainant by email and by hard copy, submitted to the World Intellectual Property Organisation Arbitration and Mediation Center (“WIPO Center”) a complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on October 24, 1999 (“Uniform Policy”), and under the Rules for Uniform Domain Dispute Resolution Policy implemented by ICANN on the same date (“Uniform Rules”). The email copy of the complaint was received by the WIPO Center on December 2, 2004, and a hard copy of the complaint was received on December 22, 2004. An acknowledgement of receipt was sent by the WIPO Center to the Complainant by email on December 21, 2004. A copy of the acknowledgement of complaint was sent to the administrative contact of the Respondent on the same day.

3.2 Confirmation of Registration Details

A request for Registrar verification was despatched by the WIPO Center to the Registrar on December 21, 2004. It appears that in this case, the Case Manager for the WIPO Center notified the complaint to the Respondent before receiving the Registrar verification. However, a precaution was taken of checking the “WHOIS” page at eNom’s website on December 23, 2004, and the panel is content that there was no material default affecting the conduct of the case.

3.3 Notification to Respondent

Notification of the complaint was sent to the Respondent on December 23, 2004, all necessary steps having been made to satisfy the WIPO Center that the formal requirements of the Uniform Policy and the Uniform Rules had been complied with in full.

3.4 This administrative panel finds that the WIPO Center had discharged its responsibility under the Uniform Rules “to employ reasonably available means calculated to achieve actual notice to the Respondent”.

3.5 Filing a Response

No response was filed by the Respondent within the time specified in the Notification of Complaint. As of the date of this decision, no response has been filed by the Respondent.

3.6 A default notice was sent by the WIPO Center to the Respondent on January 13, 2005.

Constitution of Administrative Panel

3.7 Having received no response from the Respondent either to the initial notification or to the default notice, the WIPO Center proceeded to appoint a single panelist and invited Mr. Gordon Harris to so act. On January 31, 2005, Mr. Harris submitted to the WIPO Center a statement of acceptance and declaration of impartiality and independence. On February 1, 2005, the WIPO Center issued to both parties a notification of appointment of administrative panel and projected decision date, informing of Mr. Harris’s appointment and that absent exceptional circumstances, a decision would be provided by this administrative panel by February 15, 2005. The case before this administrative panel was conducted in the English language.

Compliance with the Formalities of the Uniform Policies and the Uniform Rules

3.8 This administrative panel notes that pursuant to Rule 1 of the Uniform Rules the “respondent” means the holder of a domain registration against which a complaint is initiated, and that pursuant to Rule 3(c) of the Uniform Rules, “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”.

3.9 This administrative panel, therefore, concurs with the assessment by the WIPO Center that the complaint complies with the formal requirements of the Uniform Policy and the Uniform Rules.

4. Factual Background

4.1 The Complainant first became aware of the registration by the Respondent of the domain names at issue in this dispute in October 2004. The registrations had in fact taken place on May 7, 2004. The domain names both refer to a website that contains various links to sports shoes, and those of the Complainant in particular. In particular, the website also refers to the domain name of the Complainant’s own website, “www.adidas.com”, by means of a link. However, the link does not connect to the Complainant’s website, going instead to another website of the Respondent.

4.2 At the beginning of 2004, the Complainant announced that a new advanced running shoe technology would be launched under the name “ADIDAS 1”. That shoe is now being marketed by the Complainant through its own website. The launch of the ADIDAS 1 product pre-dated the registration of the domain names at issue.

4.3 The Complainant has tried on a number of occasions to contact the Respondent by mail, fax and email. No response has been received.

5. The Parties’ Contentions

The Complaint

5.1 The Complainant contends that each of the three elements specified in paragraph 4 of the Uniform Policy are applicable to each of the domain names the subject of this dispute.

5.2 In relation to element (i) of paragraph 4(a) the Complainant contends that each of the domain names is confusingly similar to the Complainant’s registered trade marks.

5.3 In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain names bear no relationship to the business of the Respondent and consequently that the Respondent has no rights or legitimate interests in respect of the domain names in issue.

5.4 In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that evidence of bad faith registration and use is established in the light of the “fame and distinctiveness of the ADIDAS trade mark”.

5.5 It is contended by the Complainant that it has become established in previous cases that registrations of domain names containing very well known trade marks constitute bad faith per se.

5.6 It is further contended by the Complainant that the use of a domain name to attempt to attract, for commercial gain, Internet users to the corresponding website by creating a likelihood of confusion is a sign of bad faith. It is contended that such practice has occurred in this case.

5.7 Finally, it is contended by the Complainant that the Respondent’s bad faith can be established from the fact that the domain names were registered shortly after the announcement of the launch of the ADIDAS 1 products. The nature of the domain names in question reflects an intention to make a connection with that product.

The Response

5.8 The Respondent did not file a response to the complaint.

6. Discussion and Findings

Identical or Confusingly Similar

6.1 It is not necessary to recite previous cases or basic principles to reach the conclusion that the domain names registered by the Respondent are identical or confusingly similar to the trade marks of the Complainant. It is now an established principle that very minor departures from a well known brand do not get away from a finding of identicality or confusing similarity, and furthermore in this case Complainant has registered as a trade mark the name ADIDAS 1 in conjunction with the launch of its new shoe product at the beginning of 2004.

6.2 The domain name <adidas1.com> is identical to the ADIDAS 1 trade mark. The domain name <adidasone.com> are confusingly similar to the ADIDAS 1 trade mark, with the number “1” replaced by the word “one” with the identical meaning and sound.

Rights or Legitimate Interests

6.3 The Complainant sums the position up saying that “the fact that the domain names bear no relationship to the business of the Respondent, and the fact that the mark ADIDAS is not one the Respondent would legitimately choose in the context of the provision of goods or services via a website unless seeking to create an impression of an association with the Complainant, can only result in the conclusion that the Respondent has no rights or legitimate interests in the domain names the subject of the complaint”.

6.4 The panel has nothing to add to that contention which is self-evident from the facts of the case. The Complainant has made out a strong case that Respondent lacks rights or legitimate interests in the disputed domain name; one that the Respondent has chosen not to rebut.

The Domain Names were Registered and are being used in Bad Faith

6.5 The Complainant’s representation that registrations of domain names containing such well known trade marks can constitute bad faith is accepted by the panel. In the absence of any response, it is impossible to give consideration to any possibility that there can have been a sound reason for the adoption of the domain names in question by the Respondent. The association of timing with the launch of the Complainant’s “ADIDAS 1” product, and the use to which the domain name is used is further evidence of registration and use in bad faith.

6.6 Accordingly, it is the decision of the panel that there is sufficient evidence to establish that the domain names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Uniform Policy.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Uniform Policy and 15 of the Uniform Rules, the panel orders that the domain names which are the subject of this complaint be transferred to the Complainant.

Gordon D Harris
Sole Panelist

Dated: February 11, 2005