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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Reebok International Limited v. Domain Privacy Service, Hong Kong Names LLC

Case No. D2008-0359

 

1. The Parties

Complainant is Reebok International Limited, Bolton, United Kingdom of Great Britain and Northern Ireland, represented by Klos Morel Vos & Schaap, The Netherlands.

Respondents are Domain Privacy Service, Jupiter, Florida, United States of America; Hong Kong Names LLC, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <reebokhockey.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2008. On March 10, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 19, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 20, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 31, 2008. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on April 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 22, 2008.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on April 30, 2008. 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

The trademark upon which the Complaint is based is REEBOK. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the REEBOK trademark around the world and particularly in the United States of America. The REEBOK trademark was registered in the United States of America under Nos. 1,133,704 on April 22, 1980 (filed on November 25, 1977), 1,390,793 on April 22, 1986 (filed on August 12, 1985), 1,534,383 on April 11, 1989 (filed on November 9, 1987), 1,728,475 on October 27, 1992 (filed on February 20, 1992), and 1,871,428 on January 3, 1995 (filed on September 3, 1993) for various goods and services, including sports gear and related apparel for various sports such as athletics, basketball, soccer and hockey.

According to the documentary evidence and contentions submitted, the REEBOK brand was first created in 1958 and introduced in the United States of America in 1979, and is currently one of the world’s most famous brands for sports, fitness and casual footwear, apparel and equipment. Besides owning trademark registrations for hockey products, REEBOK is also active in the field of hockey equipment and apparel.

According to the documentary evidence and contentions submitted, the domain name <reebokhockey.com> was registered with Moniker Online Services, LLC. on April 29, 2004. Complainant states that it became aware that Respondents had registered the disputed domain name in December 2007.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark because it incorporates the REEBOK trademark and the addition of generic word “hockey” does not prevent a connotation with REEBOK’s hockey products. Complainant also argues that the addition of a gTLD suffix “.com” does not avoid that a domain name be considered identical or confusingly similar to a registered trademark.

Complainant further contends that Respondents do not have rights or legitimate interests regarding the disputed domain name because (i) Respondents have provided no evidence for the assumption that they have rights or legitimate interest in respect of the domain name at issue, (ii) Respondents have not used the disputed domain name in connection with a bona fide offering of goods or services, and (iii) the disputed domain name is not one that the Respondents would legitimately choose in the context of providing goods or services.

Finally, Complainant contends that Respondents registered the disputed domain name in bad faith because (i) the REEBOK trademarks are well known and registration of a domain name containing well-known trademarks constitute bad faith per se; (ii) at the time of registration of the disputed domain name Respondents knew, or at least should have known, the existence of Complainant’s trademarks and business; (iii) the primary reason of the Respondents to register the domain name at issue is to disrupt the business of Complainant; (iv) Respondents are using the domain name <reebokhockey.com> for commercial gain to redirect Internet users to sponsored listings of commercial websites of third parties; and (v) one of the Respondents has shown a pattern of bad faith conduct.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

A. Effect of the Default

The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondents to submit a Response. As a result, the Panel infers that the Respondents do not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondents will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

B. Identical or Confusingly Similar

The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hitachi, Ltd. v. Arthur Wrangle, supra. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; adidas-Salomon AG v. Mti Networks Ltd, WIPO Case No. D2005-0258; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.

That is particularly true where the trademark is highly recognizable and famous, as in the instant case. The domain name at issue incorporates the whole of the famous REEBOK trademark, and that fact may lead the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.

In addition, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.

The word “hockey” is purely descriptive of a sport activity and does not generally affect a finding of similarity where a registered trademark is incorporated into a domain name. As a matter of fact, the combination of “reebok” with “hockey” creates an immediate potential for false association with the REEBOK trademark and brand name, and a high degree of initial confusion. adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, WIPO Case No. D2006-0748.

Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

C. Rights or Legitimate Interests

Respondents were apparently using the disputed domain name to resolve to a website with sponsored links for commercial gain. Reference is made to Annex 6 of the Complaint. The Panel attempted to reach the website attached to the domain name <reebokhockey.com> but the website was apparently inactive (access on May 10, 2008).

The issue as to whether use of a domain name for purposes of offering “sponsored links” creates a legitimate right to a domain name has been addressed in previous WIPO UDRP decisions. See Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819. That panel relied on Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, where the panel held that bona fide use does not exist when the intended use is a deliberate infringement of another’s rights. That ruling applies equally in the instant case. There is clear evidence that Respondents intend to infringe on Complainant’s trademark rights and take advantage of the notoriety associated to the REEBOK name.

In fact, the Panel sees no plausible explanation for Respondents’ adoption and use of the term “Reebok” in the disputed domain name and, accordingly, concludes that the disputed domain name was selected and used by Respondents with the intent to attract for commercial gain Internet users. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.

In short, the Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondents lack rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

D. Registered and Used in Bad Faith

(i) Bad faith because of the fame of the REEKBOK trademark

Complainant’s first contention of bad faith is based on the argument that registration of a domain name containing well-known trademarks constitutes bad faith per se.

The Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself. See PepsiCo, Inc. v. “null”, aka Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.

The Panel also finds that the REEBOK trademark has acquired extensive and worldwide reputation in the field of sports and is to be regarded as a well-known trademark.

(ii) Actual or constructive knowledge of Complainant’s trademark rights

Complainant’s second contention of bad faith is based on the argument that at the time of registration of the disputed domain name Respondents knew, or at least should have known, the existence of Complainant’s trademarks and business.

The Panel is aware that some WIPO panels are reluctant to introduce the concept of constructive knowledge into the UDRP but that, where a complainant had a United States registered trademark and respondent was located in the United States, this concept has been used to support a finding of registration and/or use in bad faith. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.4). See also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242; eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.

In this case Complainant has United States registered trademarks, but one of the Respondents is not located in the United States. However, there are other factors that lead to the conclusion that Respondents had actual knowledge of the Complainant’s trademark. As one panel held before, “given the Complainant’s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.” Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.

Those circumstances are of equal application here. In addition to REEBOK mark being worldwidely known, Complainant is currently using the website “www.rbkhockey.com” as its official Internet platform for the RBK HOCKEY brand and products. Therefore, in light of the reputation of the REEBOK trademark, the reproduction by Respondents of that trademark in its entirety, and the combination of that trademark with the descriptive term “hockey”, it is clear that Respondents in all likelihood knew of the existence of Complainant’s trademark and of its relevance in the sport market, including in the field of hockey.

A contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain name would have revealed Complainant’s long standing registrations in the United States of America. See, for instance, RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.

(iii) Attempt to disrupt Complainant’s business

Complainant’s third contention of bad faith is based on the argument that the primary reason of the Respondents to register the domain name at issue is to disrupt the business of Complainant.

A finding that Respondents are attempting to attrack Internet users to Respondents’ website by capitalizing on Complainant’s fame and reputation clearly indicates that such practice will adversely affect Complainant’s business. This is bad faith use for the purpose of the Policy. Therefore, the Panel finds that there is no need to expand on this point.

(iv) Attempt to attrack Internet traffic for commercial gain

Complainant’s fourth contention of bad faith is based on the argument that Respondents are using the the domain name <reebokhockey.com> for commercial gain to redirect Internet users to sponsored listings of commercial websites of third parties.

The Panel has already found that that the disputed domain name was selected and used by Respondents with the intent to attract for commercial gain Internet users. The Panel concurs with the understanding of several other WIPO panels that the use of a domain name to point to a website that offers sponsored links to other websites under similar circumstances is an evidence of bad faith. Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.

(v) Pattern of bad faith conduct

Complainant’s fifth contention of bad faith is based on the argument that one of the Respondents has shown a pattern of bad faith conduct.

In fact, Hong Kong Names LLC has lost various UDRP disputes before WIPO, in which bad faith has been found in each instance. At least in two cases, Hong Kong Names LLC was also found to be in the business of buying and selling domain names. See Patelco Credit Union v. Hong Kong Names LLC, WIPO Case No. D2006-0202; Fannie May Confections, Inc. v. Hong Kong Names LLC, WIPO Case No. D2006-0814; Hunter’s Specialties, Inc. v. Hong Kong Names LLC., WIPO Case No. D2006-1250; Estes Express Lines v. Whois Data Shield / Hong Kong Names LLC., WIPO Case No. D2007-0100; Asurion Corporation v. Hong Kong Names LLC, WIPO Case No. D2007-0290; CCM IP, S.A. v. Hong Kong Names LLC, WIPO Case No. D2007-0514; Gateway Inc. v. Registrant [6999] (whoisdatashield@gmail.com); Moniker Privacy Services / Registrant [1237600] Hong Kong Names LLC, WIPO Case No. D2008-0054.

Therefore, the Panel finds that one of the Respondents has shown a pattern of bad faith conduct.

In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

 

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 <reebokhockey.com> be transferred to Complainant.


Manoel J. Pereira dos Santos
Sole Panelist

Date: May 14, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0359.html

 

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