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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson

Case No. D2006-0748

 

1. The Parties

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

The Respondents are Digi Real Estate Foundation of Panama City, Panama and Patrick Williamson of London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrars

The disputed domain names:

<addidasgolf.com> is registered with Bizcn.com,

<addidass.com> is registered with Rommel.ca;

<addidis.com>, <adidasfootball.com>,<adidass.com>,<adidasskate.com>, <adidassoccer.com> are registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2006. On June 15, 2006, the Center transmitted by email to Bizcn.com, Inc., NameScout Corp. and eNom requests for registrar verification in connection with the domain names at issue. On June 16, 2006, Bizcn.com, Inc. and eNom transmitted by email to the Center its verification responses, while Rommel.Ca sent its verification response on June 22, 2006. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 30, 2006. The Center verified that the Complaint and the Amendment thereto 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 July 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2006.

The Center appointed Anders Janson as the sole panelist in this matter on August 10, 2006. 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.

The Panel allows, with reference to paragraph 10(e) of the Rules, the Complaint against the domain name <addidis.com> and hereby consolidates the proceedings. This decision is based on the following facts: Digi Real Estate Foundation was also involved in registering the domain name <addidis.com> and the disputed domain names are directed to essentially the same websites. Special reference is, regarding the grounds for the consolidation, made to Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659.

 

4. Factual Background

The Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:

The Complainant is a company incorporated and existing under the laws of Germany. The Complainant is an international sports and fitness company, selling products in over 160 countries, with sales amounting to EURO 5.8 billion in 2005. In 1949, the Complainant was named “adidas” after its founder Adi Dassler. The Complainant has since then started to use and register the ADIDAS trademark for its products.

According to the Complainant the trademark ADIDAS is under protection throughout the world for various goods and services such as athletic footwear, sports apparel, sports equipment like balls and bags. The trademark can, according to the Complainant, be regarded as a well-known trademark within the meaning of article 6bis of the Paris Convention. The Complainant has, in the Complaint, put forward a number of registrations,

- International registration nr. 354.439, dated March 20 1969, for goods in class 28.

- International registration nr. 358.770, dated June 27 1969, for goods in class 25.

- International registration nr. 487.580, dated August 25 1984, for goods in classes 18, 25 and 28.

- International registration nr. 498.358, dated October 17, 1985, for goods in class 3.

- International registration nr. 588920, dated June 17 1992, for goods in classes 9 and 14

- International registration nr. 667.288, dated June 25, 1996, for goods in class 9

- International registration nr. 787.174, dated July 2002, for goods in class 32.

Furthermore, the Complainant has registered the domain name <adidas.com> on September 25, 1995.

The Panel notes that the registration dates of the Complainant’s trademark and the domain name <adidas.com> predate the registration of the disputed domain names by the Respondents, which was from July 24, 2003 and onwards.

The Respondents are Digi Real Estate Foundation and Patrick Williamson. Very little is known of the identity and nature of the Respondents except for their addresses. The Respondents are in default and, accordingly, have not challenged the conclusions of the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain names are confusingly similar to the trademark ADIDAS in which the Complainant has rights;

- The Respondents have no rights or any legitimate interests in respect of the domain names;

- The domain names were registered and have been used in bad faith; and

- The domain names <addidasgolf.com>, <addidass.com>, <addidis.com>, <adidasfootball.com>, <adidass.com>, <adidasskate.com> and <adidassoccer.com> should be transferred to the Complainant

B. Respondents

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The domain names at issue are <addidasgolf.com>, <addidass.com>, <addidis.com>, <adidasfootball.com>, <adidass.com>, <adidasskate.com> and <adidassoccer.com>.

As numerous panels before this Panel have found, based on the evidence put forward by the Complainant, established that ADIDAS is a well-known trademark and that the trademark is both distinctive and famous.

The disputed domain names <adidasfootball.com>, <adidasskate.com> and <adidassoccer.com>.

The Panel first deals with the disputed domain names <adidasfootball.com>, <adidasskate.com> and <adidassoccer.com>.

The disputed domain names contains the Complainant’s mark ADIDAS in its entirety, with the added suffixes “football”, “skate” and “soccer” and the generic and functional top level domain name “com”. In determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs that constitute the suffix shall be disregarded. The question is therefore if the addition of the suffixes makes the disputed domain names dissimilar to the Complainant’s registered trademarks.

In previous UDRP decisions (See, for example, Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903: Magnum Piering v. Mudjackers and Garwood S. Wilson, Sr. WIPO Case No. 2000-1525; and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273) panels have found that the fact that a domain name incorporates a complainant’s registered mark may be sufficient to establish identity or confusingly similarity for the purpose of the Policy.

The term “adidas” is the distinctive part of the disputed domain names. Little is added to the overall impression of the disputed domain names by the generic sports terms “skate”, “football”, and “soccer”. The addition of the generic sports words to the trademark ADIDAS will mislead Internet users to assume that the websites are connected with the Complainant and that they will find, on such websites information of the Complainant’s assortment of, for instance, soccer articles. The Panel therefore finds that the addition of the suffixes “skate”, “football” and “soccer” does not diminish the similarity between the disputed domain names and the Complainant’s trademark.

The disputed domain names <adidasfootball.com>, <adidasskate.com> and <adidassoccer.com> must therefore be considered confusingly similar to the trademark “ADIDAS”. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a) with respect to these disputed domain names

The disputed domain names <addidass.com>, <addidis.com>, <adidass.com>, <addidasgolf.com>.

Secondly, the Panel deals with the disputed domain names <addidass.com>, <addidis.com>, <adidass.com> and <addidasgolf.com>.

As mentioned above, in determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs that constitute the suffix shall be disregarded.

The question is if the disputed domain names are, as asserted by the Complainant, to be considered as identical or confusingly similar to the trademark ADIDAS in which the Complainant has rights.

The addition of an extra “s”, “d” or both an extra “s” and “d” does not, according to this Panel, render the disputed domain names <addidasgolf.com>, <adidass.com> and <addidass.com> less confusingly similar to the ADIDAS trademark. Nor does the replacement of an “i” instead of an “a” in <addidis.com>. They remain both visually, phonetically and conceptually similar to the trademark ADIDAS. The misspellings do not create a new or different mark in which the Respondents have rights for the purpose of the proceedings.

The disputed domain names <addidass.com>, <addidis.com>, <addidasgolf.com> and <adidass.com> must therefore be considered confusingly similar to the trademark ADIDAS. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a) in respect of these disputed domain names.

B. Rights or Legitimate Interests

The Respondents did not file a Response. In these circumstances, when the Respondents do not have an obvious connection with the disputed domain names, the mere assertion from the Complainant that the Respondents have no right or legitimate interest is enough to shift the burden of proof to the Respondents to demonstrate that such right and legitimate interest exists.

The Respondents have not demonstrated or argued that they used or prepared to use the disputed domain names in connection with a bona fide offering of goods or services or that any other rights or legitimate interests exist. Registration of a domain names in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondents have not presented any evidence of rights or legitimate interests in using the disputed domain name and have no obvious connection to it. The Complainant has also made at least a prima facie showing of the Respondent’s probable lack of rights or legitimate interests in the disputed domain names, which has not been rebutted. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith

Paragraph 4(b) states 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.

The Panel notes that the examples of bad faith registration and use set forth in Paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found.

The Panel finds that the Respondents cannot plausibly claim never to have heard of the Complainants trademark. The Complainant has numerous trademark registrations, both on the international and European level. The mere quantity of the disputed domain names registered by the Respondents can not possibly suggest anything else than that the Respondent had previous knowledge of the Complainant and its trademarks, and that the registrations in all likelihood were made in bad faith.

The Panel therefore finds that the Respondents must, at the time of the registration of the disputed domain names, have had actual and constructive knowledge of the Complainant’s registered trademark that is both famous and distinctive.

The Respondents must have been aware of that they were infringing the Complainant’s trademark rights when registering the disputed domain names.

The above-mentioned is enough for this Panel to conclude that the registrations of the disputed domain names were made in bad faith. As regards use, the domain names <adidasgolf.com> and <addidass.com> currently resolve to what appear to be near identical parked sites containing a search facility and references to “sponsored links” and “popular categories”. The domain names <addidis.com> and <adidasssoccer.com> both resolve to an identical site at “http://pages.toyp.org/world-cup-soccer.html” which contains a “sponsored link” to equipment for referees and what appears to some information regarding the FIFA World Cup. This does not in the circumstances suggest use consistent with good faith. In all probability, it indicates that the Respondents are intending to use the disputed domain names to profit from the significant prospects for confusion with the Complainant and its mark. In effect, to free-ride on the Complainant's well-known mark by benefiting or intending to benefit from click-through, sponsorship or other revenue-raising arrangements related to Internet user “hits” on these sites. The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to 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 names <addidasgolf.com>, <addidass.com>, <addidis.com>, <adidasfootball.com>, <adidass.com>, <adidasskate.com> and <adidassoccer.com> be transferred to the Complainant.

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Anders Janson
Sole Panelist

Dated: August 24, 2006