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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
adidas International B.V. vs. Kadana Holdings Pty Ltd.
Case No. D2000-1148
1. The Parties
The Complainant in this administrative proceeding is adidas International B.V. ("Complainant"), a private company with limited liability, incorporated under the laws of the Netherlands and with its main business address at Olympic Plaza, Fred. Roeskestraat 123, 1076 EE Amsterdam, the Netherlands, represented by Mr. Jeroen Bedaux, Nauta Dutilh, P.O. Box 7113, 1007 JC Amsterdam, the Netherlands.
The Respondent is Kadana Holdings Pty. Ltd. ("Respondent"), director Dr. Geoffrey Walter Speiser, P.O. Box 29, Rose Bay, Sydney NSW 2029, Australia, represented by Mr. Rodney Kent, Selby Anderson Attorneys and Consultants, Level 12, 117 York Street, Sydney NSW 2000, Australia, and Mr. Michael Green, Barrister-at-law, 13th Floor, St. James Hall Chambers, 169 Phillip Street, Sydney NSW 2000, Australia.
2. The Domain Name and Registrar
The domain name at issue is: "foreversport.com" ("Domain Name"), registered with Registrars.comTM ("Registrar") of 475 Sansome St. # 570, San Francisco, CA, U.S.A. 94111.
3. Procedural History
A Complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy") and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on August 30, 2000, by e-mail and was received on August 31, 2000, in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on September 1, 2000.
On September 4, 2000, a Request for Registrar Verification was transmitted to the Registrar, which confirmed with its Verification Response of September 6, 2000, that the disputed Domain Name was registered with Registrars.com™. In addition, the Registrar forwarded the WHOIS details and stated that the Domain Name was currently under registrar-hold in the Shared Registry Server pending arbitration.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on September 4, 2000, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
No formal deficiencies having been recorded, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent on September 11, 2000, setting a deadline of September 30, 2000, by which the Respondent could file a Response to the Complaint.
A request for extension of time for filing a response was made to the WIPO Center on September 20, 2000 by the Respondent. With reference to the Complainant's agreement, the WIPO Center notified a new due date for receipt of the response as of October 9, 2000.
On October 9, 2000, the WIPO Center received Respondent’s Response by e-mail and fax and confirmed the receipt with an Acknowledgement of Receipt on October 12, 2000. On October 13, 2000, the WIPO Center received the Response in hardcopy.
Both, Complainant and Respondent, requested a single-member panel. Consequently, the WIPO Center invited the undersigned to serve as a sole panelist in Case No. D2000-1148, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence, which was duly signed and returned to the WIPO Center on October 19, 2000.
The WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date as of November 2, 2000. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant, one of the world's leading sports and fitness product companies, is the registered owner of the trademark "FOREVER SPORT" in several countries throughout the world including, but not limited to, the United States, Australia, New Zealand, South Africa, China, Hong Kong, Switzerland and most countries of the European Union. A schedule of trademark registrations was attached to the Complaint [Annex 4].
In Australia, "FOREVER SPORT" has been registered as a TradeMark No. 790592 in the Register of TradeMarks of the Commonwealth of Australia for a period of ten years commencing on April 8, 1999 in:
Class 18 for leather and imitations of leather goods;
Class 25 for clothing, footwear and headgear; and
Class 41 for organization of sports events and recreational, sporting and cultural activities [Annex 4]
The disputed domain name "foreversport.com" was registered by Respondent on January 1, 2000.
5. Parties’ Contentions
Firstly, the Complainant contends that the Domain Name "foreversport.com" is identical to the Complainant's registered trademark "FOREVER SPORT".
Secondly, the Complainant contends that its registered trade mark "FOREVER SPORT" has not been the subject of any authorization for use in favor of the Respondent and the Respondent has no rights or legitimate interests in respect of the disputed Domain Name.
Thirdly, the Complainant contends that the Respondent satisfies the requirement of paragraph 4a(iii) of the Policy, namely that the Domain Name has been registered and is being used in bad faith.
Fourthly, the Complainant contends that the Domain Name should be transferred to the Complainant.
The Respondent does not deny the first of the Complainant's contentions stated above.
The Respondent does assert that it has rights or legitimate interests in respect of the Domain Name.
The Respondent contends it has not acted in bad faith.
The Respondent furthermore contends that the nature of the potential dispute between the parties as to the entitlement to use the Domain Name is something which lies outside the appropriate scope of the present administrative proceeding and is best determined in a Court of competent jurisdiction.
Additional respective contentions of the Parties may be contained in the following discussions and findings.
6. Discussion and Findings
Paragraph 4a of the Policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith."
Identical or Confusingly Similar Domain Name: Policy 4a(i)
The Domain Name at issue is "foreversport.com". Complainant is the holder of the registered trademark "FOREVER SPORT", which is obviously identical with the relevant and disputed part of the Domain Name.
In any event, the Respondent does not contest this point.
Taking above mentioned into consideration, the Panel holds that the Complainant has established element (i); of the Policy's paragraph 4a.
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4a(ii)
It is first convenient to recall that according to paragraph 4c of the Policy, a Respondent can establish its rights or legitimate interests in the Domain Name if it shows the presence of any of the following circumstances:
"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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."
Respondent asserts that prior to the notice of the dispute, and in compliance with paragraph 4c(i) of the Policy , preparations were made to use the Domain Name in connection with a bona fide offering of goods.
The Panel finds it difficult to believe such assertion, mainly because Complainant, among others, furnished to the Panel an exhibit [Annex 5] showing the content of Respondent's web site "foreversport.com" as of August 18, 2000. It was not contested by Respondent that Annex 5 of the Complaint accurately reflects the status of the web site "foreversport.com" prior to the arising of the dispute and for a period of more than eight months after the registration of the Domain Name. Thus, the disputed web site, in its original shape, showed a page entitled "Bad Breath Cures" and it did not contain any reference to sport, nor even the words "forever" or "sport". Respondent seems to have simply copied the content of its web site under the domain name "badbreathcures.com" which clearly seems to be a web site dedicated to the sale of dental products. In the Panel's opinion, by copying the contents of a dental web site to "foreversport.com", no legitimate use of the latter web site can be established. It appears quite evident to the Panel that the reason for doing so was indeed to create a surface impression of exercising a legitimate interest in the disputed Domain Name.
Then, Respondent claims having conducted trademark searches in the United States and Canada without finding any trademarks pending or registered. The first trademark search allegedly took place on January 1, 2000, i.e. prior to the registration of the disputed Domain Name. However, Respondent does not submit solid evidence regarding this trademark search. In the absence of appropriate means to test Dr. Geoffrey W. Speiser's declaration on this and other contentions, his declaration should be considered as a party contention with no additional weight.
Respondent, furthermore, asserts having conducted a second trademark search at the Australian Trademarks Office on October 8, 2000. Respondent attached an exhibit [Annex GWS5] to proof Dr. Speiser's search on the ATMOSS search system which did not return any results. Looking closer into that document, the Panel observes that it is not dated. Moreover, Respondent has obviously conducted the search by typing "foreversport" in one word whereas Complainant's trade mark "FOREVER SPORT" obviously is written in two words. Under these circumstances, the trade mark search did not prove to be successful, and in any event such search cannot itself establish Respondent's rights or legitimate interests in the Domain Name.
Respondent, additionally, furnished an exhibit [Annex GWS3] showing a document entitled "Just Clean Teeth Business Plan". Respondent claims that this document is a true business plan for the services apparently intended to be marketed under the disputed Domain Name. Annex GWS3 is neither dated nor are the pages numbered. Looking into that document, it appears to be (at best) a discussion paper for some vague business ideas. The Panel finds that a serious business plan at least contains thorough information on the product, the market place, the positioning of the product in the market, the competitive environment, the sales and marketing strategies, financial aspects, a long term budget, etc. The Panel concludes that the document entitled "Just Clean Teeth Business Plan" is no evidence for Respondent's preparations to use the Domain Name in connection with a bona fide offering of goods.
In the absence of any other indications as to a legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under Article 4a(ii) of the Policy showing that Respondent has no right or legitimate interest in the Domain Name.
Domain Name Registered and Used in Bad Faith: Policy 4a(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4b states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 your documented out-of-pocket costs directly related to the Domain Name.; or
(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] 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 your location."
With respect to the circumstances set out in paragraph 4b (ii) and (iii) above, there are no contentions made by the Complainant.
Complainant alleges, however, that the disputed Domain Name was registered by Respondent primarily for the purpose of selling, renting, or otherwise transferring it to Complainant. In this context, it is not contested by Respondent that Complainant's attorney first offered Respondent's representative a sum of AUD$ 3000 for the transfer of the Domain Name. Such offer was declined, however. Following this first approach initiated by Complainant, negotiations started between Complainant's and Respondent's representatives concerning a suitable higher amount. During these negotiations, Respondent's representative took the position that Respondent would certainly be willing to sell the disputed Domain Name but, in view of his personal wealth, he would not have to sell for a nominal amount. Complainant contends that one of Respondent's representatives (Geoff Selby) signaled a prize greater than AUD$ 10,000, $20,000 or even $50,000.
Respondent does not explicitly contest this allegation but asserts that it is no longer willing to sell the Domain Name today, since it expects to make more money by using the web site in the above mentioned manner. This change of attitude regarding a web site which first was "for sale" (far in excess of Respondent's out-of-pocket costs directly related to the web site) does not re-establish Respondent's good faith in this matter. Rather, the Panel is of the opinion that Respondent's initial attempt to sell the Domain Name at a grossly inflated price was and remains a bad faith attempt under the Policy, even though Respondent's strategy seems to have changed in the meantime.
Respondent, furthermore, claims that its intention was to use the slogan "forever sport ..... forever bad breath", for a marketing campaign under the respective Domain Names. The Panel finds this explanation hard to believe, particularly in view of the fact that Respondent first registered "foreversport.com" on January 1, 2000, and only four months later, i.e. on May 2, 2000, the domain name "foreverbadbreath.com". Should the mentioned slogan have existed when the first registration was made, then it would have seemed natural that the second registration would have been made at the same time or shortly thereafter. In addition, the Panel cannot understand the force of Respondent's marketing slogan "forever sport ... forever bad breath". Combined in this way, the slogan would be negative and generally be understood by the public as perpetuating bad breath when doing sport. A slogan "forever sport ... forever good breath" would be a more beneficial association for Respondent's dental products but it would then not have suited Respondent's dental web page "foreverbadbreath.com". In short, the Panel finds Respondent's explanations concerning its "forever campaign" inconclusive and hard to believe.
Finally, Respondent is the holder of the domain name "badbreathcures.com" ("Principal Site") and several other domain names such as "tonguescraping.com", "halitosiscures.com", "toothgel.com" and "foreversport.com" ("Secondary Sites"). The Principal and all Secondary Sites have a clear link to dental matters, except for the disputed Domain Name "foreversport.com" which falls completely out of place. Even though Respondent claims that there is a connection between sport and bad breath, the Panel finds it difficult to see the benefit of a Domain Name "foreversport.com" in this dental context.
In an overall assessment of the contentions and facts mentioned above, the Panel concludes that the requirement of paragraph 4a(iii) of the Policy is sufficiently made out by the Complainant, and that the disputed Domain Name has been registered and used in bad faith.
Adjudication by a Court of Competent Jurisdiction: Policy 4k
Respondent contends that the nature of the dispute between the Parties is something which lies outside of the appropriate scope of the present administrative proceeding and should be determined by an ordinary Court of competent jurisdiction.
The Panel disagrees with this contention, but would like to mention that, according to paragraph 4k of the Policy, either party is free to submit the present dispute to a court of competent jurisdiction for independent resolution. The Panel's decision will not be implemented by the Registrar until after a period of ten business days from the date it is notified to the Registrar. If this happens, the transfer of the Domain Name is suspended during the ordinary court proceedings.
In view of the circumstances and facts discussed above, the Panel decides that the disputed Domain Name is identical to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4i of the Policy, the disputed Domain Name: "foreversport.com" shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: November 2, 2000