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adidas-Salomon AG v. Mti Networks Ltd [2005] GENDND 415 (3 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

adidas-Salomon AG v. Mti Networks Ltd

Case No. D2005-0258

1. The Parties

The Complainant is adidas-Salomon AG, Herzogenaurach, Germany, represented by Klos Morel Vos & Schaap, the Netherlands.

The Respondent is Mti Networks Ltd, Surrey, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <shopadidas.com> is registered with Tucows Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the “Center”) received the Complaint on March 10, 2005, (electronic version) and on March 14, 2005, (hard copy). On March 10, 2005, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On March 11, 2005, Tucows Inc. transmitted by email to the Center its verification response and confirmed that it was the Registrar for the domain name at issue and the Respondent is listed as the registrant of the domain name at issue. Further, Tucows Inc. provided contact details for the administrative, billing, and technical contact and confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the domain name at issue. The Center verified that the Complaint satisfied the formal requirements of the Policy, 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”). The Complainant made the required payment to the Center.

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2005. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2005.

The Center appointed Markus S. Bonair as the sole panelist in this matter on April 19, 2005. 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 paragraph 7 of the Rules.

The language of the proceeding is English.

4. Factual Background

In 1949, the Complainant was named ADIDAS, after its founder Adi Dassler. The Complainant has since then used and registered, on a worldwide basis, the mark ADIDAS for its products. The Complainant has grown into one of the world’s leading sports and fitness product companies. In 2004, the Complainant’s sales reached € 6.5 billion.

The Complainant is the owner of numerous trademark registrations consisting of or incorporating the mark ADIDAS, e.g.:

International Trademark Registration No. 354439 ADIDAS, registration date March 20, 1969, in International Class 28.

International Trademark Registration No. 358770 ADIDAS, registration date June 27, 1969, in International Class 25.

International Trademark Registration No. 487580 ADIDAS, registration date August 25, 1984, in International Classes 18, 25 and 28.

International Trademark Registration No. 588920 ADIDAS, registration date June 17, 1992, in International Classes 9 and 14.

The Complainant is the owner of the domain name <adidas.com>, under which name the Complainant operates its official website.

The domain name at issue was registered on November 1, 2002.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the domain name at issue is confusingly similar to the trademark ADIDAS in which the Complainant has rights. Further, the Complainant contends that by adding the word “shop” to the trademark ADIDAS, the consumer will think that reference is made to a so called “Internet shop”, through which products of the Complainant can be obtained.

Rights or Legitimate Interests

The Complainant contends that it has given no consent, license or any other authorisation to the Respondent for the registration of the domain name at issue.

Further, no evidence has been provided by the Respondent for the assumption that the Respondent uses, or prepares to use, the domain name at issue in connection with a bona fide offering of goods or services and/or that the Respondent is commonly known by the domain name. The domain name at issue is not linked to any website or other on-line location.

Furthermore, the Respondent does not make a legitimate noncommercial or fair use of the domain name at issue.

The domain name at issue bears no relationship to the business of the Respondent.

The Respondent’s domain name <mtinetworks.com> is linked to the website “www.microthought.com”. If the company Microthought is affiliated to the Respondent, which most likely is the case, the Respondent’s primary business involves services such as web hosting, web designing and services relating to domain name registration. Obviously, no legitimate interest in a domain name incorporating the well known trademark ADIDAS follows from the Respondent’s business.

Considering the above and also the fact that the trademark ADIDAS is not one that the Respondent would legitimately choose in the context of provision of goods or services via a website, unless seeking to create an impression of an association with the Complainant, one can only come to the conclusion that the Respondent has no rights or legitimate interests in the domain name at issue, but instead is attempting to trade off of the fame and goodwill of the ADIDAS trademark.

Registration and Use in Bad Faith

The Complainant contends that registration of the domain name at issue can already be qualified as being made in bad faith per se, because of the fame and distinctiveness of the ADIDAS trademark. It should also be noted that the ADIDAS trademark is a fantasy name that has no meaning in any language. As such, the word ADIDAS can only refer to the trademark and company name of the Complainant.

Further, the Complainant contends that the Respondent, at the time of the registration of the domain name at issue, knew, or at least should have known, that the registration and use of the domain name at issue without the Complainant’s permission would constitute bad faith. It is very unlikely that the Respondent did not know that it was infringing the Complainant’s trademark rights when registering the domain name at issue. In this respect, the Complainant refers to Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Further, the Complainant contends that it has been held in numerous UDRP cases that the registration of a domain name containing a well-known trademark constitutes bad faith per se. Among others, in Victoria’s Secret et al v. Powerbiz, NAF Case No. FA0101000096497, which dealt with the domain name <victorias-secret-forever.com>, the NAF Panel held:

“Because of the popularity of Complainants’ goods and the famousness of their marks, it may be assumed that the Respondents had notice of Complainants’ marks at the time of the domain name registration. The domain name in question is so obviously connected with the Complainants, that use by someone with no connection with the Complainants suggests bad faith. See Exxon Mobil Corp. v. Fisher, WIPO Case No. D2000-1412 (December 18. 2000) (finding that the Respondent had actual and constructive knowledge of the Complainant’s EXXON mark given the world-wide prominence of the mark and thus the Respondent registered the domain name in bad faith).”

Further, the Respondent has made no use of the domain name at issue since the registration on November 1, 2002. Passive holding of a well-known trademark as a domain name is one of the factors that can constitute bad faith. The Complainant refers to Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins, WIPO Case No. D2001-0865, and also Don Cornelius Productions, Inc. v. Fred Fluker d/b/a Futurevision, WIPO Case No. DTV2001-0026.

In several previous cases, the Complainant has filed successful Complaints against similar use in bad faith of the trademark ADIDAS. The Complainant refers to adidas Salomon AG v. Vincent Stipo, WIPO Case No. D2001-0372, adidas Salomon AG v. Worldnet Companies Inc, WIPO Case No. D2001-1156, adidas Salomon AG v. Dominique Legueret, WIPO Case No. D2002-0107, adidas-Salomon AG v. Domain Location, WIPO Case No. D2003-0490, adidas-Salomon AG v. Domain Locations, WIPO Case No. D2003-0489, and adidas Salomon AG v. Digi Real Estate Foundation, WIPO Case No. D2004-1079.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and commencement of this administrative proceeding, and that the Respondent’s failure to submit a Response is not due to any omission by the Center.

In view of the Respondent’s failure to submit a Response, the Panel shall decide the dispute based upon the Complaint according to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate according to paragraph 14(b) of the Rules.

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

i) that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

ii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant contends that the domain name at issue is confusingly similar to the trademark ADIDAS in which the Complainant has rights. The Complainant has shown that it is the owner of numerous trademark registrations consisting of or incorporating the mark ADIDAS. The domain name at issue consists of the word “shop” followed by the mark ADIDAS and the gTLD “.com”.

First of all, the gTLD “.com” is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark.

Further, the fact that a domain name wholly includes a Complainant’s mark is sufficient to establish confusing similarity, despite the addition of generic words, such as e.g. “shop”. This has been held by numerous prior panels. See e.g. Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, and EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.

Accordingly, the Panel finds that the domain name at issue is confusingly similar to the trademark ADIDAS in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may demonstrate its rights to or legitimate interests in the domain name by proving any of the following circumstances:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has shown that the domain name at issue does not resolve to a website and contends that it has not given consent, license or any other authorisation to the Respondent to register the domain name at issue. Further, the Complainant contends that the Respondent is not commonly known by the domain name at issue and does not make a legitimate noncommercial or fair use of the domain name at issue. The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights to or legitimate interests in the domain name at issue.

There is no evidence before the Panel that any of the situations in paragraph 4(c) of the Policy apply in the case of the Respondent.

It has been established in several WIPO UDRP cases that, by virtue of paragraph 4(c) of the Policy, once a complainant establishes a prima facie case that respondent has no rights or legitimate interests in respect of the domain name, the burden of production on this factor shifts to the respondent. See e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.

The Respondent has not filed a response and has failed to meet that burden. The Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four nonexclusive criterions for Complainant to show bad faith registration and use of a domain name:

(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

In addition to these criterions, other factors alone or in combination can support a finding of bad faith.

In the light of the Complainant’s wide reputation in the trademark ADIDAS, it is most likely that the Respondent was aware of the Complainant’s trademark ADIDAS when registering the domain name at issue. It is most unlikely that the Respondent would have chosen to register a domain name that consists of the word “shop” and the invented and highly distinctive mark ADIDAS, without knowledge of the Complainant’s trademark.

The knowledge of the Complainant’s mark at the time of registration of the domain name suggests bad faith, see e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

The Complainant has shown that the Respondent engages in passive holding of the domain name at issue. The fact that a respondent engages in passive holding of a domain name can in certain circumstances be evidence of use in bad faith, see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In this case, the Respondent has not submitted a response to deny the contentions of the Complainant. The domain name at issue includes the Complainant’s widely known trademark ADIDAS which has a strong reputation. The Respondent has made no use of the domain name at issue and has submitted no evidence of any good faith use of the domain name at issue.

In light of the above, the Panel finds that the domain name <shopadidas.com> has been registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has entirely satisfied its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <shopadidas.com>, be transferred to the Complainant.

Markus S. Bonair
Sole Panelist

Dated: May 3, 2005