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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Adidas AG v. Paolo Luppi

Case No. D2008-1334

 

1. The Parties

The Complainant is Adidas AG, of Germany, represented by Gianni, Origoni, Grippo & Partners, Italy.

The Respondent is Paolo Luppi , of Italy, represented by Giambrocono & C. S.p.A., Italy.

 

2. The Domain Name and Registrar

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

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2008. On September 2, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed Domain Name. On September 2, 2008, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2008. The Response was filed with the Center on September 25, 2008.

The Center appointed Luca Barbero as the sole panelist in this matter on October 3, 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 Complainant is the owner of several trademarks registration consisting in the word mark ADIDAS such as:

- the International trademark No 354439 for ADIDAS, registered on March 20, 1969 in class 28;

- the International trademark No 358770 for ADIDAS, registered on June 27, 1969 in class 25;

- the International trademark No 487580 for ADIDAS, registered on August 25, 1984 in classes 18, 25 and 28; and

- the International trademark No 588920 for ADIDAS, registered on June 17, 1992 in classes 9 and 14.

The Complainant is furthermore the registrant of a number of domain names consisting in or including the word mark ADIDAS such as <adidas.com> registered on September 25, 1995 and <adidas-group.com> registered on June 30, 2005.

The Respondent registered the Domain Name <adidasfootballshop.com> on December 7, 2007 .

 

5. Parties’ Contentions

A. Complainant

The Complainant states that the Domain Name <adidasfootballshop.com> is confusingly similar to the ADIDAS trademark also in light of the fact that the Domain Name wholly includes the Complainant’s trademark.

According to the Complainant the addition of the generic words “football” and “shop” does not remove the confusing similarity between the trademark and the Domain Name. The Complainant emphasizes that the consumer will think that the reference is made to a so called “internet shop” through which products of the Complainant can be obtained.

With reference to rights or legitimate interests in respect of the disputed Domain Name, the Complainant asserts that the Respondent has neither been consented to nor acquiesced in the use of the disputed Domain Name.

The Complainant alleges that the Respondent is not using, and has not made preparations to use, the disputed Domain Name in connection with a bona fide offering of goods and services since the site does not accurately disclose the Respondent’s relationship with the trademark owner.

The Complainant underlines that the Respondent should clearly indicate that the respondent is not an authorized reseller or distributor of the Complainant while to the contrary, according to the Complainant, the website falsely suggests that it is a “rivenditore adidas football Italia” (in English “reseller of adidas football Italy”) and “negozio online adidas calcio” (meaning “online shop adidas football”) providing the Panel with a screenshot of the web site on July 7, 2008 and on August 22, 2008. In the view of the Complainant, such allegations are misleading for the consumers who might wrongly believe that the website corresponding to the disputed Domain Name is the “official” Adidas AG shop.

The Complainant furthermore emphasizes that the Respondent uses the website also to sell goods bearing competitors’ trademarks like “Nike”, “Tiger” and “Superga” through the link with other websites such as “www.nikefootballshop.com”.

The Complainant states that the Respondent is not commonly known by the trademark ADIDAS.

The Complainant further contends that the Respondent is not making a legitimate, non commercial or fair use of the Domain Name but the intent is clearly for commercial gain, “misleadingly to divert consumers or to tarnish the trademark”.

With reference to the circumstances evidencing bad faith registration, the Complainant asserts that the mark ADIDAS has become very well-known around the world and that therefore the Respondent was most likely aware, at the time of registration of the disputed Domain Name, of the prior and exclusive rights held by the Complainant on the ADIDAS trademark.

The Complainant contends that the Respondent has registered the disputed Domain Name in order to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation of the site.

The Complainant emphasizes that the use made by the Respondent of the disputed Domain Name is intentionally addressed to divert Internet users to a website that displays links to additional Respondent’s websites offering and selling competitors’ products such as <nikefootballshop.com>, <tigershop.com>, <supergashop.com> and that therefore the Respondent is seeking to disrupt the Complainant’s business.

B. Respondent

As to the whether the Domain Name is identical or confusingly similar to the Complainant’s trademark, the Respondent does not provide any comment in the Response.

With reference to rights or legitimate interests in respect of the disputed Domain Name, the Respondent indicates that original and true Adidas football products are legally sold and therefore is entitled to use the Complainant’s trademarks to describe its business as “it really and only sells Adidas products for football”.

The Respondent contends that neither a consent nor a license nor any other authorization are required by the Policy if the domain name is used in connection with a bona fide offering of goods. The Respondent indicates to sell Adidas football products, which are original and legally acquired and therefore to use the Domain Name in connection with a bona fide offering.

The Respondent further states that the list of requirements of the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, for the bona fide offering are all met.

With regards to the disclosure of the Respondent’s relationship with the Complainant, the Respondent states that it is clearly and widely stated that the website is owned by Paolo Luppi aka Mr. Football and nowhere it is written in the entire that the site is “official” or somehow authorized by Adidas AG. The Respondent further contends that it is suggesting that it is “a rivenditore adidas football italia” as the Respondent sells Adidas football products.

The Respondent furthermore states that “[…] could not find in the site, nor in Annex 11 to the Complaint, the words “negozio on line adidas calcio”. Anyway the site not falsely but really suggests the former”.

The Respondent indicates that the references to other trademarks are “only made to describe the Respondent’s network”.

With reference to the Complainant’s allegation that the Respondent’s intent is to tarnish the ADIDAS trademarks, the Respondent underlines that “similar intent would damage the Respondent’s business in the first place, as it only sells Adidas products on this site and it has all the interests in building value on said trademark”.

The Respondent emphasizes that it not only offered goods before receiving any notice of the dispute but actually sold “adidas football products” through the disputed Domain Name.

The Respondent also contends that the Domain Name is being used in “nominative fair use” since the ADIDAS products cannot be readily identified without using the Complainant’s trademark, the Respondent only uses the mark for the identification and the Respondent does nothing to suggest sponsorship or endorsement by the trademark holder.

The Respondent also indicates that to prevent any possible risk of confusion, the Respondent has removed all Adidas device trademarks more than one month before the Complaint was filed.

With reference to the circumstances evidencing bad faith the Respondent contends that the Complainant reiterated the arguments presented for the lack of rights or legitimate interests.

According to the Respondent, even if the presence of a bona fide offering should be considered sufficient for the rejection of the Complaint, the registration and use of the disputed Domain Name in good faith are really clear.

The Respondent states that none of the circumstances of bad faith of the article 4(b) of the Policy are verified since the Domain Name was registered to create a true and legal business without trying to offer the Domain Name to the trademark holder or showed to be interested in a lucrative transfer of the same, the Respondent is selling original ADIDAS products and has acted to prevent possible risk of confusion.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) 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 a service 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 is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registration ADIDAS. The Panel finds that the disputed Domain Name is confusingly similar to the trade marks ADIDAS owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.

Therefore, the mere addition of the words “football” and “shop” does not exclude the likelihood of confusion between the Domain Name and the Complainant’s trade mark. Indeed the words “football” and “shop” are descriptive of Complainant’s business. See along these lines, adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, WIPO Case No. D2006-0748, where the Panel found that “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.”.

In comparing the Complainant’s marks to the Domain Name with reference to <adidasfootballshop.com> it should also be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of the Domain Name. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused Domain Name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”).

In view of the above, the Panel finds that the Complainant has proven that the disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, it is sufficient that the Complainant show a prima facie case in order to shift the burden of proof to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy as decided e.g. in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

The Panel shares the view of the panel in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 where it was stated that “ the Oki Data criteria are appropriate to be applied in cases, as the present case, where the Complainant has not authorized the Respondent to act as its distributor or and there is no contractual relationship between the Complainant and the Respondent”. See also Le Creuset SA v. Vineyards Direct Limited, WIPO Case No. D2004-0551 where the Panel recognized that being an authorized distributor of the Complainant’s goods was not a precondition of bona fide use.

The Oki Data Case (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) sets the following conditions to be satisfied in order to find a bona fide offering of goods or services:

- The Respondent must actually be offering the goods or services at issue.

- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.

- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

In the present case, the Respondent is offering ADIDAS products on the website corresponding to the contested Domain Name. However the Panel notes that the website displays in clear evidence links to other Respondent’s websites such as “www.supergashop.com”, “www.tigershop.it”, “www.allstarconverseshop.com”, “www.nikefootballshop.com” and others.

The Panel finds that such a conduct of the Respondent is not consistent with a bona fide offering of goods or services since some of these brand correspond to direct competitors of the Complainant and it cannot be excluded that Internet users were not switched to other goods. See Nikon, Inc. and Nikon Corporation v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).

As to the issue that the Respondent must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official website, the Panel notes that in the documents annexed to the Complaint and to the Response (with the comment that it was later amended by the Respondent) there is a screenshot of the website on line at the disputed web site on July 7, 2008.

In such a page the ADIDAS trademark including three stripes figurative element was reproduced in the top left corner with the word “FOOTBALLSHOP” in capital letters underneath. Furthermore, in the first line of the text of the page the Respondent indicated, again all in block characters:

“VENDITA ONLINE ADIDASFOOTBALL” (SALE ON LINE ADIDASFOOTBALL) and “NEGOZIO ONLINE ADIDAS CALCIO” (ON LINE SHOP ADIDAS FOOTBALL).

Again the Panel finds such a conduct is not consistent with a bona fide offering of goods since it does not accurately disclose the registrant’s relationship (or lack thereof) with the trademark owner nor the Panel can consider such use a legitimate, non commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark as decided. Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website). The fact that the Respondent states that the website is owned by Paolo Luppi aka Mr. Football does not of itself serve to accurately disclose the registrant’s relationship (or lack thereof) with the trademark holder. Indeed, the fact that the Respondent states on the website that it is a reseller (as opposed to for example to an unauthorized reseller of Complainant’s products may in the circumstances even serve to foster an (inaccurate) impression of an association between Mr. Luppi and the ADIDAS brand.

The Panel observes that, but for the web site “www.nikefootballshop.com”, all the other web sites managed by the Respondent with links currently inserted in the web page on line at the disputed Domain Name, such as “www.supergashop.com” , “www.tigershop.it” and “www.allstarconverseshop.com”, currently still show, on the top left corner of each home page, a reproduction of the corresponding registered trademarks.

Thus, on balance, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration the Panel notes that in light of the widely known character of the Complainant’s trademarks and the activities of the Respondent, the Respondent was certainly aware of the Complainant’s trademark.

As stated in adidas-Salomon AG v. Mti Networks Ltd, WIPO Case No. D2005-0258 “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 Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Internet users, in light of the contents of the web page containing the wording “VENDITA ONLINE ADIDASFOOTBALL” (SALE ON LINE ADIDASFOOTBALL) and “NEGOZIO ONLINE ADIDAS CALCIO” (ON LINE SHOP ADIDAS FOOTBALL) together with the reproduction of the ADIDAS registered figurative trademark, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

With reference to the use of a Domain Name to generate confusion with competing activities, See Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Respondent’s registration and continued use of the contested domain name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant’s website to the website of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use.”); Marriott International, Inc. v. Vladimir Kyznetsov, National Arbitration Forum Case No. FA95648 (bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services [. . .] identical to the services offered by the Complainant”).

Furthermore, the Panel considers an additional circumstance evidencing the bad faith the fact that the Respondent has also registered numerous domain names formed with sport and clothing brands associated with the name “shop” and/or “footballshop” such as, quoting some of the ones advertised on <adidasfootballshop.com>, <supergashop.com> , <tigershop.it>, <kawasakishop.it>, <allstarconverseshop.com>, <fornarinashop.it, <crocsshop.it>, <nikefootballshop.com> and most of them are currently used in connections with the reproductions of the corresponding third party trademarks in the respective web pages.

In the circumstances, the Panel finds on balance that the Respondent registered and is using the Domain Name in bad faith.

 

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, <adidasfootballshop.com> be transferred to the Complainant.

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Luca Barbero
Sole Panelist

Dated: October 17, 2008