WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
adidas-Salomon AG v Worldnet Companies, Inc.
Case No. D2001-1156
1. The Parties
Complainant is ADIDAS-SALOMON AG, a corporation organised under the laws of Germany, having its principal place of business in (8522) Herzogenaurach (Ad-Dassler-Strasse 1-2), Germany and represented by Mr. Gregor S.P. Vos, ("Complainant").
Respondent is WORLDNET COMPANIES, INC., a corporation organised under the laws of the USA, having its principal place of business in (33334) Ft. Lauderdale, Florida, USA, (1299 East Commercial Blvd., Floor #2) ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <adidascasino.com>. The Registrar is Tucows, Inc., 96 Mowat Avenue, Toronto, Canada ("the Registrar").
3. Procedural History
The complaint was submitted electronically with the World Intellectual Property Organisation Arbitration and Mediation Center (The "WIPO Center") on September 21, 2001. The hardcopy under cover of a letter of the same date was received on September 24, 2001, ("the Complaint"). An Acknowledgement of Receipt was sent by the WIPO Center to Complainant dated September 21, 2001.
On September 24, 2001, a Request for Register Verification was transmitted to the Registrar. On September 25, 2001, the Registrar confirmed by e-mail that the domain name <adidascasino.com> is registered with the Registrar and that Respondent is the current registrant of that domain name.
On September 26, 2001, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline of October 16, 2001, by which Respondent could make a response to the Complaint.
On October 22, 2001, a Notification of Respondent Default was sent by email and by courier to Respondent.
On October 30, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.
4. Factual Background
Complainant is the owner of the trademark ADIDAS, registered worldwide for various goods and services. See e.g. WIPO registration nos. 487580, 566295 and R358770.
The domain name <adidascasino.com> was registered on April 22, 1998 by Respondent.
Complainant sent a Cease and Desist Letter to Respondent on August 9, 2001. In this letter Complainant also summoned Respondent to transfer the domain name <adidascasino.com> to Complainant. Complainant did not receive any reply to this letter from Respondent.
5. Applicable Rules
Paragraph 4 (a) of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) the Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4 (a) (iii) above.
Paragraph 4 (c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondentís rights or legitimate interest to the domain name for the purpose of Paragraph 4 (a) (ii) above.
6. Partiesí contentions
In 1949 the company of Complainant was named ADIDAS. From then onwards Complainant started to use and register, on a worldwide basis, the ADIDAS trademark for its products. Complainantís company has subsequently grown into one of the worldís leading sports and fitness products companies Ė ADIDAS products are sold in over 160 countries. According to Complainant the trademark ADIDAS is a well-known trademark within the meaning of article 6bis of the Paris Convention on the Protection of Industrial Property.
The grounds for the Complaint are:
(1) the domain name <adidascasino.com> is confusingly similar to Complainantís trademark ADIDAS in accordance with Paragraph 4 (a) (i) of the Policy. The domain name <adidascasino.com> is a combination of Complainantís ADIDAS trademark and of the word "casino". The mere addition of the word "casino" does not alter the fact that Respondentís domain name evidently is confusingly similar to Complainantís ADIDAS trademark.
(2) Complainant states that Respondent has no rights or legitimate interests in respect of the domain name <adidascasino.com> as provided in Paragraph 4 (a) (ii) in connection with Paragraph 4 (c) of the Policy.
Complainant has not given consent, license or other authorisation to Respondent for the use or registration of the domain name. According to Complainant, Respondent has, until recently, used the domain name <adidascasino.com> to offer links to <worldnetcasinos.com>, <supersix.net>, <casinopirata.com> and <aceinthehole.co.cr>. Under these domain names websites relating to gambling are operating. These websites are created by companies that are in no way linked to Complainant. According to Complainant, providing these links cannot be considered as a bona fide offering of goods or services in connection with the domain name.
Secondly, Complainant states that Respondent has not been, and is not commonly known by the domain name.
Thirdly, Complainant has stated that Respondent is not making 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 ADIDAS. Respondent is evidently relying on the fame and reputation of Complainantís trademark to attract visitors to its website and other gambling related websites.
(3) Complainant states that the domain name <adidascasino.com> was registered in bad faith as provided in Paragraph 4 (a) (iii) in connection with Paragraph 4 (b) of the Policy. According to Complainant Respondent has used the domain name registration to intentionally attract, for commercial gain, Internet users to its website. Given the fame of Complainantís trademark, it is inconceivable that Respondent was not aware of Complainantís trademark before registering the domain name.
As Respondent has not submitted a response to WIPO, Complainantís contentions are uncontested.
7. Due process
Where, as in this case, a Respondent does not submit a response and the file does not contain any communication from Respondent, the rules of due process require the Panel to verify as much as possible that Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documents, that this is the case.
A hard copy of Complainant was sent by the WIPO Center to the address of Respondent mentioned under 1 above by courier and by email (returned as not deliverable) and to the technical and administrative contact by email.
The Panel therefore assumes that Respondent has received these documents, but has chosen not to respond.
8. Discussion and Findings
Complainant must provide evidence of all elements of Paragraph 4 (a) of the Policy. Since the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.
a. Trademark rights
Complainant has provided sufficient evidence of its rights to the trademark ADIDAS and that the trademark ADIDAS is well-known worldwide. See e.g. WIPO registration nos 487580, 566295 and R358770.
b. Identical or confusingly similar
The domain name <adidascasino.com> is clearly confusingly similar to Complainantís trademark ADIDAS. The domain name incorporates the trademark ADIDAS with the generic word "casino" and the suffix ".com" (which indicates that the domain name is registered in the .com gTLD). It is clear that the well-known and distinctive trademark ADIDAS is the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected to the ADIDAS trademark. (See e.g. WIPO Case No. D2000-1554 Daimler Chrysler AG v James Cruz <driveamercedes.com>; WIPO Case No. D2000-0660 Yahoo! Inc. v Casino Yahoo, Inc. <casinoyahoo.com>; WIPO Case No. D2000-0464 Toshiba Corporation v Distribution Purchasing and Logistics Corporation <toshibastore.com> and WIPO Case No. D2001-0055 America Online, Inc. v Yeteck Communiciation, Inc. <aolsportsbet.com>, <aolsports.net>, <aolcasino.com>.)
In view of the above, it is clear that the domain name and the trademark are confusingly similar. The ability of the word "casino" to distinguish the domain name from Complainantís trademark is limited. The Panel finds that Respondent does not create a new or different mark in adding the noun "casino" and that this addition does not alter the likelihood of confusion with Complainantís trademark.
c. Rights or legitimate interests
Under paragraph 4 (c) of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4 (a) (ii), inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you 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 (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 are making 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 or service mark at issue."
Respondent apparently intends to use the domain name for a website which provides links to websites related to (sports)gambling. Complainant has not given consent, license or other authorisation to Respondent for such or any other use or registration of the domain name. The mere fact that Respondent apparently uses the domain name to provide links to (sports)gambling websites is not sufficient for Respondent to claim a legitimate interest.
As Respondent has not provided any counter-evidence of an own right or legitimate interest, it must be assumed that Respondent has no such right or legitimate interest.
d. Bad faith
Complainant is relying on Paragraph 4 (b) (iv) of the Policy, which provides that sufficient evidence of bad faith may consist of:
"(iv) By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel finds that Complainant has provided sufficient evidence in this regard. Since Respondent is, among others, using the domain name <adidascasino.com> to provide links to sports betting websites, it is difficult to imagine that Respondent was not aware of the trademark ADIDAS, which is identified worldwide with sport products, when registering the domain name <adidascasino.com>. Therefore, Respondent has deliberately included the well-known trademark ADIDAS in the domain name <adidascasino.com> in order to attract business. Furthermore, Respondent, by registering and using the domain name <adidascasino.com> has created the (incorrect) impression of association with Complainant, thereby creating a likelihood of confusion with that trademark. This confirms that Respondent has intentionally used the goodwill of Complainantís trademark to create traffic to its website operating under the domain name <adidascasino.com>. (See also e.g. WIPO Case No. D2000-0413 Chanel, Inc. v Estco).
Additional circumstances which indicate the bad faith of Respondent are the fact that he has not responded to the communications of Complainant and has not submitted a response in this case.
The Panel, therefore, concludes that there is sufficient evidence that Respondentís registration and use of the domain name <adidascasino.com> is in bad faith.
On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders the registration of the domain name <adidascasino.com> be transferred to Complainant.
Dated: November 13, 2001