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Converse Inc. v. Perkins Hosting [2005] GENDND 780 (17 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Converse Inc. v. Perkins Hosting

Case No. D2005-0350

1. The Parties

The Complainant is Converse Inc., Massachussetts, United States of America represented by Thompson Coburn LLP, United States of America.

The Respondent is Perkins Hosting, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <conversebasketball.com> (the “Domain Name”) is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2005. On April 7, 2005, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On April 7, 2005, Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2005.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 11, 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 the Rules, paragraph 7.

4. Factual Background

It is undisputed that Complainant Converse Inc. has manufactured and sold footwear, sportswear, and sports accessories branded with the CONVERSE family of trademarks (“the Mark”) for nearly a century. Its product line has prominently featured basketball shoes since 1917. Complainant has sold more than 750 million pairs of its most popular line of basketball shoes, in over 140 countries, expending large sums to advertise and promote the Mark.

Complainant has obtained 23 trademark registrations for variations of the Mark in the United States alone. The earliest appears to have been granted in 1988, showing 1922 as the year of first use in commerce. Complainant uses the Mark in its <converse.com> domain name, for a website advertising and selling Complainant’s basketball shoes and other products.

Respondent Perkins Hosting registered the Domain Name in March 2002, listing Jason Perkins as its administrative contact. The Domain Name automatically redirects Internet users to “www.adidas.com/us/heritage/home.asp”, a page on a website of Complainant’s competitor Adidas, another leading manufacturer of sports shoes and related products.

Complainant sent a cease-and-desist letter to Respondent at its registered address but received no answer. Complainant and the Center have received no response to their several email and postal communications to Respondent concerning the current proceeding.

5. Parties’ Contentions

A. Complainant

Complainant observes that its famous and registered mark is incorporated in its entirety in the Domain Name, and that the addition of the word “basketball” to the Mark heightens the confusing similarity with the Mark because the Mark has long been associated with basketball shoes.

Complainant finds no evidence that Respondent has ever been known by the Domain Name or used it in connection with a bona fide offering of goods and services. Complainant challenges Respondent’s rights or legitimate interests in the Domain Name.

Finally, Complainant concludes that the exploitation of its famous mark to divert Internet traffic to the site of a competitor, presumably for commercial gain, is an instance of bad-faith registration and use.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules directs as follows: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy provides that in order to divest Respondent of the Domain Name, Complainant must demonstrate each of the following:

- The Domain Name is identical or confusingly similar to Complainant’s mark; and

- Respondent has no rights or legitimate interests in the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

As in other cases where a respondent fails to reply, the Panel must still satisfy itself that Complainant has met its overall burden of proof under Paragraph 4 of the Policy. Thus, the uncontested facts must provide a sufficient prima facie basis for finding confusing similarity to a protected mark and for inferring that, more probably than not, Respondent has no right or legitimate interest in the Domain Name and has registered and used it in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003), <croatiaairlines.com>.

A. Identical or Confusingly Similar

Complainant has long-established and registered trademark rights in the Mark, which is well known and associated with basketball shoes. The Mark was established in commerce for nearly a century before Respondent registered the Domain Name, and it was registered as a trademark in the United States many years before Respondent’s registration of the Domain Name.

The Domain Name contains the Mark in its entirety and adds the word “basketball,” which is a relevant descriptive word pertaining to Complainant’s most famous products. The concatenation of the Mark and a pertinent word or phrase is likely to increase the likelihood of confusion rather than distinguish the Domain Name from the owner of the Mark. See, e.g., Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (March 18, 2005), <microsoftcustomerservice.com> (“[t]he addition of such relevant descriptive words reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant”); Nike, Inc. v. Paul Verschoor, WIPO Case No. D2000-1707 (March 2, 2001) (domain names such as <nike-soccer.com> confusingly suggested a connection with the owner of the NIKE mark, because it is widely associated with the sport of soccer).

For purposes of establishing this element of the complaint, it is irrelevant that the Domain Name resolved to a web page advertising the products of a competitor, so that an Internet user opening that page would presumably realize that it was not affiliated with Complainant after all. The question under Policy paragraph 4(a) is whether the Domain Name itself, without regard to the content of an associated website, creates confusion as to the sponsorship of the domain. This approach is necessary because cybersquatters – those who register and use domain names in bad faith – frequently achieve their purposes simply by creating “initial interest confusion” at the point where an Internet user types an address or selects one of the results of a search engine query in an effort to find a website related to the trademark owner. Once diverted to another website, the visitor can be presented, for example, with advertising for competing or different products, or with material designed to disparage the mark. See, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (January 25, 2001) <guiness.com> (“by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s website”).

The Panel in AT&T Corp. v. Yong Li, WIPO Case No. D2002-0960 (December 11, 2002), <attbroad.com> cited the Ticketmaster decisions for this proposition:

“By such use [of a famous mark] the Respondent intentionally attempts to attract Internet users to an on-line location, which creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location. The fact that such confusion may be dispelled, and replaced by annoyance or disgust once the nature of the site is revealed, does not negate the fact of initial confusion. (Ticketmaster Corporation v. Iskra Service, WIPO Case No. D2002-0165 ( April 8, 2002); Ticketmaster Corporation v. Polanski, WIPO Case No. D2002-0166 (April 8, 2002); Ticketmaster Corporation v. Dotsan, WIPO Case No. D2002-0167 (April 8, 2002).”

The Panel in the current case endorses this reasoning to conclude that the Domain Name here is confusingly similar to Complainant’s registered trademark.

B. Rights or Legitimate Interests

The Panel concurs with the reasoning of Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (November 5, 2004), to the effect that Paragraph 4(c) of the Policy “contemplates an obligation on the part of Respondent to come forward with evidence of rights and legitimate interests,” and that a Panel can “appropriately” infer the absence of such rights or legitimate interests under Paragraph 14(b) of the Rules in cases where the respondent fails to submit any response to the complaint. See also Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023 (March 9, 2000).

Thus, the Panel accepts the uncontested fact that Complainant has not authorized Respondent’s use of the Mark. There is nothing in the record to indicate that Respondent used the Domain Name in connection with a bona fide offering of goods or services before Complainant’s use and registration of the Mark, or that Respondent was known by that name, or that Respondent made a legitimate noncommercial use of the Domain Name. See Policy Paragraph 4(c). Instead, it appears that Respondent uses the Mark in the Domain Name purely to divert Internet visitors seeking information about Complainant’s products to a website advertising its direct competitor’s products.

The Panel concludes that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Complainant’s Mark is registered and well known. It is used to brand basketball shoes, as well as other products. It is not plausible that Respondent was unaware of the Mark when it registered and used the Domain Name, especially since it has used the Domain Name to redirect Internet users to a website selling directly competing Adidas products.

It can fairly be inferred that registration and use of the Domain Name <conversebasketball.com>, comprised of a famous mark and a relevant descriptive word, was a bad-faith effort to confuse Internet users. WIPO UDRP panels have found bad faith simply in the act of registering a domain name incorporating a famous mark and thereby diverting traffic from the owner of the mark. See, e.g., Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274 (November 28, 2000), <wwwmicrosoft.com> (finding bad faith because, “[g]iven the familiarity with Microsoft as a trademark and corporate name worldwide, it appears inconceivable to the panelist, in the absence of an explanation from the respondent, that the domain name was not registered . . . to confuse consumers”). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), <telstra.org> (bad faith finding based on the implausibility that respondent could legitimately use the mark in a domain name and that respondent was unaware of this fact at the time of registration). The panel in AT&T Corp. v. Yong Li, supra, found bad faith in such “opportunistic use of the noted similarity between domain name and the Complainant’s mark.”

The evidence of bad faith is compounded in this case by Respondent’s apparent lack of any rights or legitimate interests in the Mark or in the sale of Complainant’s products, its redirection of Internet users to a competitor’s website, and its failure to respond to a cease-and-desist letter and the various notices in this proceeding. See, e.g., Encyclopedia Britannica, Inc. v. John Zucarini, WIPO Case No. D2000-0330 (June 7, 2000) (inferring bad faith from a failure to respond in any way to allegations of trademark infringement).

Policy paragraph 4(b) provides a non-exhaustive list of bad-faith conduct, which includes the following (Paragraph 4(b)(iv)):

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

It is not known whether Adidas was aware that Respondent’s Domain Name served to redirect Internet users to a website advertising Adidas products, or whether Respondent obtained any form of compensation for redirecting traffic to such a site. The Adidas website itself is commercial, however, and Respondent has diverted to it Internet users seeking information about Complainant’s products. Possibly Respondent hoped by this stratagem to induce Complainant to purchase the Domain Name, although there is no indication in the record of an attempt to sell the Domain Name to Complainant. It does appear, however, that Respondent “intentionally attempted to attract, for commercial gain, Internet users to . . . [an]other on-line location” -- whether the commercial gain accrued in the first instance to Respondent or to the owner of the other location.

By declining to come forward with an alternative explanation, Respondent subjects itself to the adverse inference that causing initial interest confusion and redirecting Internet users to the website of one of Complainant’s chief competitors was either commercially motivated (bad faith under Policy paragraph 4(b)(iv)) or “for the purpose of disrupting the business of a competitor” (bad faith under Policy paragraph 4(b)(iii)). The Panel concludes that both objectives – illegitimate gain and foreseeable commercial injury – constitute bad faith registration and use of the Domain Name.

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 <conversebasketball.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist

Date: May 17, 2005