WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Converse Inc. v. Forum LLC
Case No. D2007-0926
1. The Parties
The Complainant is Converse Inc., North Andover, Massachusetts, United States of America, represented by Thompson Coburn LLP, United States of America.
The Respondent is Forum LLC, Roseau, of Dominica.
2. The Domain Name and Registrar
The disputed domain name <conversehightops.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 June 22, 2007. On June 25, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On that same date, Moniker Online Services, LLC 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 June 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2007.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on August 29, 2007. 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 finds that it was properly constituted.
4. Factual Background
The Complainant, Converse Inc. (“Converse”) was established in 1908. For almost a century, Converse has designed, manufactured and marketed footwear and has expended considerable effort and sums of money to developing the goodwill of its CONVERSE trademark. It has become a prominent footwear manufacturer for various sports such as tennis and track, but it is particularly well-known for its basketball shoes.
The Complainant cited the many instances when its goods have been worn in major sporting competitions including the Olympic Games basketball competition since 1936. As a result, the CONVERSE trademark is a well known trademark in the world and a valuable asset of Converse.
Converse holds twenty-six (26) United States trademark registrations covering athletic footwear as well as other athletic-related items, including clothing, socks, eyewear, headwear, watches and sports bags. It also has a number of trademarks registered in other countries. The Complainant attached a list of such registrations as Annex E to its complaint. The Complainant also maintains an active presence on the Internet, primarily through its “www.converse.com” website where it promotes and sells its Converse footwear and provides information about the company.
By virtue of the Complainant’s United States federal trademark registrations and its use of the CONVERSE mark for almost one hundred (100) years, Converse has acquired the requisite trademark rights.
5. Parties’ Contentions
In the Complainant’s view, the Respondent’s <conversehightops.com> domain name wholly incorporates Complainant’s CONVERSE mark and merely adds to that the term “hightops” which describes one of the types of footwear on which the Converse Marks are used. Citing previous UDRP decisions, it asserts that the addition of this term is insufficient to distinguish the Respondent’s domain name from its marks. It goes on to note that while the content of the website associated with this domain name should not be relevant in determining confusing similarity, it is observed that the website provides links to websites offering the footwear manufactured by the Complainant’s competitors, including Nike, Inc. Copies of the homepage from the Respondent’s website and representative pages from the linked websites were attached to the Complaint as Annex F. This fact, it is contended, also weighs in favor of a finding that the contested domain name is confusingly similar to the Complainant’s mark.
For these reasons, the Complainant submits that Respondent’s domain name is identical or confusingly similar to service marks in which Complainant has rights as required under Policy paragraph 4(a)(i).
With respect to the second requirement of Policy paragraph 4(a)(ii), it is contended that the Respondent registered the contested domain name on April 16, 2005, more than ninety years after Converse first used its CONVERSE mark.
The Respondent is not a licensee of the Complainant and has never been affiliated with, connected to, or sponsored or endorsed by it. Even if the Respondent was entitled to resell Converse’s products, which it is not, the Respondent uses the disputed domain name to direct Internet users who are looking for CONVERSE products to the products of the Complainant’s competitors. Thus, it is asserted that the Respondent’s use of this domain name falsely implies or suggests that it is affiliated or connected with, or sponsored or endorsed by the Complainant, when Respondent has never been so affiliated, connected, sponsored or endorsed.
The Complainant sent a cease and desist letter to the Respondent notifying it that its use of <conversehightops.com> was not authorized. (A copy of such notice was attached to the Complaint as Annex G.) However, no response to its letter was received, despite receiving confirmation that the e-mail was successfully delivered to the Complainant’s e-mail address of record. In addition, WhoIs fails to establish that Respondent is commonly known by the <conversehightops.com> domain name. Searches of the current United States Patent and Trademark Office records also reveal no applications or registrations for marks incorporating the term ‘converse’ in the name of the Respondent.
It is further contended that because the Respondent’s <conversehightops.com> domain name is identical or confusingly similar to the Complainant’s CONVERSE marks, and because the Respondent is doing nothing more than offering sponsored links, many of which redirect visitors to websites offering footwear manufactured by the Complainant’s competitors, the Respondent is not using the domain name in connection with a bona fide offering of goods or services.
In light of the foregoing evidence, it is reasonable to assume that the Respondent’s only interest in using the contested domain name is to trade off the goodwill of the Complainant for its own commercial benefit.
Accordingly, the Complainant submits that the Respondent has no rights or legitimate interest in respect of the conversehightops.com domain name as required under Policy paragraph 4(a)(ii).
With respect to the third requirement of the Policy, it is asserted that the domain name was registered primarily for the purpose of disrupting the Complainant’s business and that the Respondent is intentionally attempting 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, or endorsement of its website. The Respondent had actual knowledge of Converse’s rights in and to the CONVERSE mark. First, the content of the website associated with this domain name is directed to not only at Converse, but at the Complainant’s competitors. It is said to be “inconceivable” that this is mere coincidence. Second, the Complainant’s marks are registered and are well known and famous. Third, the Complainant wrote to the Respondent notifying it of the Complainant’s rights to the CONVERSE mark. It received no response.
Furthermore, the contested domain name has no relationship whatsoever to the Respondent or to its business. The Respondent has no trademark or service mark rights for this term and is not commonly known by it. Rather, it is evident that the Respondent deliberately chose this domain name to trade on the substantial value established by the Complainant in its CONVERSE mark by attempting to attract members of the public who have an interest in what the Complainant offers under its CONVERSE mark, and then offer them similar and competing products from the Complainant’s competitors, thereby deriving economic benefit from this practice by attracting such users. In this regard, the Respondent presumably obtains a commercial benefit by providing sponsored results on its site, as operators of websites of this type generally receive revenue for each click-through by on-line consumers. Given the fame and notoriety of the CONVERSE trademark, it is inconceivable that when Respondent registered the contested domain name it did so in good faith.
For all these reasons, the Complainant submits that the Respondent’s use and registration of the disputed domain name was and is in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain names, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
First, the Complainant claims and the Panel has verified to its satisfaction that the Complainant is the owner of the CONVERSE mark in the United States of America and in other countries. The Panel also verified that the Complainant operates a website which incorporates the CONVERSE mark.
The domain name in dispute, <conversehightops.com> is plainly confusingly similar to the Complainant’s trademark. It employs the mark, adding to it only the word “hightops.” Given that the CONVERSE mark is notoriously associated with athletic footwear products, particularly basketball shoes, the resulting combination makes the disputed domain name confusingly similar to the CONVERSE mark.
The disputed domain name is thus confusingly similar to a mark in which the Complainant has rights. The Complainant has plainly fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant has proven this. There is no evidence of the Respondent’s 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.
The Respondent has no apparent connection with the Complainant, nor has it been licensed or authorized by it to use the disputed domain name.
The disputed domain name is evidently not the Respondent’s name, nor is there any evidence that the Respondent is commonly known by that name.
Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
The Panel agrees with the Complainant therefore that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Third, it must be shown that the domain name at issue has been registered and is being used in bad faith. The Respondent’s domain name serves to divert users to a website which contains sponsored links. By adding the word “hightops” to the Complainant’s mark, the Respondent has misled consumers by diverting Internet traffic away from the Complainant’s website in an attempt to generate business by luring potential customers to the Respondent’s website. In the circumstances, the Panel has no doubt in concluding that the domain name was registered and used in bad faith.
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 <conversehightops.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Dated: September 12, 2007