WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
adidas-Salomon AG v. Domain Location
Case No. D2003-0490
1. The Parties
The Complainant is adidas-Salomon AG, of Herzogenaurach, Germany, represented by Klos Morel Vos & Schaap of The Netherlands.
The Respondent is Domain Location, Nassau, Ns, Bahamas.
2. The Domain Name and Registrar
The disputed Domain Name <wwwadidas.com> is registered with OnlineNIC, Inc., of San Francisco, California, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2003. On June 24, 2003, the Center transmitted by email to OnlineNIC, Inc., a request for registrar verification in connection with the Domain Name at issue. On June 25, 2003, OnlineNIC, Inc., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Email messages to the Center were received from the Respondent on June 30, 2003, in reply to the e-mails of June 24 and 25, 2003, thereby demonstrating contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 30, 2003. 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 sent formal notification of the Complaint to the registered addresses of the Respondent, and the proceedings commenced on July 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2003. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on July 23, 2003.
The Center appointed Dr. Clive N. A. Trotman as the sole panelist in this matter on July 29, 2003. 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.
A brief email communication from the Respondent was forwarded by the Center to the Panel on August 6, 2003. In accordance with Rules, paragraph 12, it was not taken into consideration.
4. Factual Background
4.1. ADIDAS is a trademark word used since 1949, and derived from the name of the Complainant company founder, Adi Dassler. The company is now one of the world's leading sports and fitness product companies. In 2002 the Complainant's sales reached EURO 6.5 billion for products with the ADIDAS trademark. These products are sold in over 160 countries.
4.2. The Complainant's trademark ADIDAS is well-known, is in world wide use and is registered internationally and in the USA in a range of classes. It is a made-up, unique and distinctive word.
4.3. The Complainant has held the registered Domain Name <adidas.com> since September 25, 1995, and operates its official website at the Internet location "www.adidas.com".
4.4. The disputed Domain Name <wwwadidas.com> appears to have been registered on June 26, 2002. The Complainant has known about it since May 2003.
5. Parties’ Contentions
5.1. The contentions of the Complainant include that the dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy by reference.
5.2. The disputed Domain Name <wwwadidas.com> is confusingly similar to the trademark ADIDAS in which the Complainant has rights.
5.3. The disputed Domain Name is designed and intended to mislead and capture Internet users who make a typographical mistake by omitting the period after "www" when seeking Complainant's legitimate website.
5.4. The Respondent does not have any rights or legitimate interests in the disputed Domain Name. The Complainant has used the trademark ADIDAS since 1949, long before the Respondent's registration of the disputed Domain Name, and has not in any way authorized or permitted the Respondent to use the trademark. The Respondent has not used the Domain Name for a bona fide offering of goods or services, has not been commonly known by the disputed Domain Name and is not making any legitimate noncommercial or fair use of it.
5.5. The Respondent’s registration and use of the Domain Name is in bad faith in the terms of the Policy. The Respondent has attempted to divert users to its website by confusion through the device of typo squatting, relying on a proportion of users making a predictable typographical mistake. Users so diverted are shown a pornographic website for purposes of the Respondent's commercial gain and with the effect of tarnishing the Complainant's good name.
5.6. The Complainant sent a cease and desist letter to the Respondent on May 26, 2003. The Respondent replied by email on May 27, 2003, in effect confirming the provision of erotic content and referring to the Domain Name being for sale.
5.7. The remedy requested by the Complainant is that the disputed Domain Name <wwwadidas.com> be transferred to Complainant.
5.8. No Response has been received and the Respondent has not contested the allegations of the Complainant.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of the Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.3. The disputed Domain Name <wwwadidas.com> as registered by the Respondent distinctly embodies and essentially comprises the Complainant's well known registered trademark ADIDAS. The preceding "www" is clearly intended to emulate the prefix "www." (with a period punctuation mark) of an authentic Internet address and does not diminish the confusing similarity. The Panel finds the disputed Domain Name to be confusingly similar to the Complainant's trademark in terms of Paragraph 4(a)(i) of the Policy.
Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name
6.4. The Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Complainant certifies and provides evidence that it has registered and used the trademark ADIDAS in many countries world-wide since 1949. The Complainant has not licensed the trademark to the Respondent nor entered into any relationship that could give the Respondent any right to use the trademark. A prima facie case has been made out to the effect that the Respondent does not have any rights or legitimate interests in the Domain Name.
6.5. The Respondent has not refuted the Complainant's claim in terms of Paragraph 4(c) of the Policy by attempting to establish rights or legitimate interests in respect of the Domain Name. The Respondent does not claim to have used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or to have been commonly known by the Domain Name; or to have made a legitimate noncommercial or fair use of the Domain Name without tarnishment of the Complainant's trademark. The Respondent has not demonstrated a legitimate interest in the Domain Name in any other way. The Panel finds for the Complainant under Paragraph 4(a)(ii) of the Policy.
Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith
6.6. In accordance with Paragraph 4(a)(iii) of the Policy the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances, without limitation, that shall be evidence of the registration and use of a Domain Name in bad faith. Of these, Paragraph 4(b)(iv) provides for a finding of bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location."
6.7. The Respondent's means of entrapping visitors to the website or ultimate destination of the disputed Domain Name is to rely on the expectation that a proportion of those Internet users who seek the Complainant's trademark name will omit to type a period between "www" and "adidas.com" in the Complainant's URL. The Respondent's ploy is known as "typo-squatting" or "typo-piracy" and has been well recognized in precedent cases (e.g., Adidas-Salomon AG v. Legueret Dominique, WIPO Case No. D2002-0107; Travelprice Com v. Pissin Chicken Inc., WIPO Case No. D2002-0129; Nike, Inc. v. Alex Nike, WIPO Case No. D2001-1115; Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158; World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256; InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069).
6.8. A record of a website with religious content implied to be the ultimate resolution of the disputed Domain Name was made by the Center on July 1, 2003. According to the Complaint the disputed Domain Name resolves to an explicitly pornographic website having no connection with the business of the Complainant and the function of the website is to generate commercial revenue by charging visitors to view its content. An email from the Respondent to the Complainant's attorney dated May 27, 2003, confirms erotic connotations and that the Domain Name is for sale. Irrespective of the content of the spurious website at the ultimate destination, the act of diversion by confusion is in itself evidence of bad faith (Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568). The Panel finds bad faith proven in the terms of Paragraph 4(b)(iv) of the Policy.
6.9. The circumstances listed in Paragraphs 4(b)(i) - (iv) of the Policy are without limitation and bad faith may be found alternatively. Registration of a well known trademark of which the Respondent must reasonably have been aware is sufficient to amount to bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
6.10. In summary, as concluded in 6.3 above the disputed Domain Name is confusingly similar to the Complainant's trademark in the terms of Paragraph 4(a)(i) of the Policy. As concluded in 6.5 above, the Respondent has no rights or legitimate interests in the Domain Name in the terms of Paragraph 4(a)(ii) of the Policy. As concluded in 6.8 and 6.9 above, the Respondent has registered and is using the Domain Name in bad faith in the terms of Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three elements required by Paragraph 4(a) of the Policy and accordingly the Administrative Panel decides for the Complainant.
The Decision of the Administrative Panel is that the disputed Domain Name <wwwadidas.com> is confusingly similar to the trademark ADIDAS in which Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed Domain Name; and that the Respondent has registered and is using the disputed Domain Name in bad faith. In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wwwadidas.com> be transferred to the Complainant.
Dr. Clive N. A. Trotman
Dated: August 12, 2003