WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adidas AG v. Daehyeon Kim
Case No. D2013-1904
1. The Parties
The Complainant is Adidas AG of Herzogenaurach, Germany, represented by Kilpatrick Townsend & Stockton LLP, United States of America (“U.S.”).
The Respondent is Daehyeon Kim of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <adidasoutdoor.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2013. On November 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 12, 2013, the Center transmitted an email to the Parties in both Korean and English languages regarding the language of the proceedings. On November 16, 2013, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 in both English and Korean, and the proceedings commenced on November 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2013.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on December 27, 2013. 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
Founded in 1949, the Complainant is an internationally recognized manufacturer, distributor and retailer of athletic and sports equipment, footwear and apparel, including outdoor apparel.
Since its inception, the Complainant has continuously operated under the ADIDAS mark in connection with its products. Further, the Complainant has expended millions of dollars in advertising and promoting its products under the ADIDAS mark in a variety of media throughout the world, including multiple page advertisements in major U.S. publications, such as Golf Digest and Sports Illustrated, in Korean publications and in broadcast advertisements on television networks worldwide.
Moreover, the Complainant has used the ADIDAS trademark in connection with its sponsorship of sports tournament and organizations, as well as world-renowned professional athletes and sports teams. Among the sponsored athletes are professional golfers Sergio Garcia, Mike Weir and Retief Goosen, NBA stars Derrick Rose, Kevin Garnett and Dwight Howard, and soccer stars David Beckham, Lionel Messi and Ricardo Kaka. Also, the Complainant has been one of the official sponsors for the World Cup soccer tournament for many years.
The Complainant owns several international registrations for the ADIDAS trademark; in Republic of Korea where the Registrant of the disputed domain name resides, the Complainant has secured nine trademark registrations for different types of its products: 1) the trademark ADIDAS (No. 22486 56530) registered on January 31, 1990; 2) the trademark ADIDAS (No. 35400 56933) registered on December 18, 1984; 3) the trademark ADIDAS (No. 36902 56728) registered on April 30, 1974; 4) the trademark ADIDAS (No. 39628 65700) registered on October 12, 1974; 5) the trademark ADIDAS (No. 123503 60460) registered on February 24, 1994; 6) the trademark ADIDAS (No. 123811 60476) registered on August 8, 1996; 7) the trademark ADIDAS (No. 197104 60884) registered on August 8, 2000; 8) the trademark ADIDAS (No. 265976 60928) registered on December 20, 2012; and 9) the trademark ADIDAS (No. 335507 61092) registered on May 1, 2006.
In addition, the Complainant owns numerous domain names which use, promote and advertise the ADIDAS mark including <adidas.com>, <shopadidas.com>, <miadidas.com>, <adidastv.com> and <adidas-group.com>. The Complainant also owns the country-code top-level domain name for the Republic of Korea <adidas.co.kr>, which offers and sells the Complainant’s outdoor-related athletic apparel and equipment.
The disputed domain name <adidasoutdoor.com> was created on October 6, 2012 and is scheduled to expire on October 6, 2014.
The language of the Registration Agreement is Korean.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:
(i) The Complainant owns valid and enforceable trademark rights in the ADIDAS mark for use in connection with a wide variety of goods and services, including athletic apparel, footwear and athletic equipment including outdoor apparel and equipment. Further, the Complainant acquired these rights long before the Respondent registered the disputed domain name.
(ii) Consumers who see the disputed domain name are certain to associate the name with the Complainant because it incorporates the ADIDAS trademark in its entirety. Moreover, the addition of a generic term, “outdoor,” does not eliminate or reduce the likelihood of confusion, but rather, increases the risk, as acknowledged in previous UDRP decisions.
(iii) The Complainant’s first use and registration of the ADIDAS trademark long predate any use of the Respondent may have made of the disputed domain name. Additionally, the Respondent registered the disputed domain name more than 25 years after the Complainant registered its first trademark registration for the ADIDAS mark in Republic of Korea. Therefore, it is the Respondent’s responsibility to establish rights or a legitimate interest in the disputed domain name.
(iv) There is no relationship between the Complainant and the Respondent giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s ADIDAS mark. Nor has the Respondent been commonly known as or done business under the name Adidas.
(v) The Respondent operates the disputed domain name merely as a parking page; further, the Respondent is not using the dispute domain name for any legitimate noncommercial or fair use purpose, but for profit. Therefore, the Complainant believes the Respondent’s use of the disputed domain name is not in connection with a bona fide attempt to offer goods and services to the public.
(vi) The facts that the disputed domain name purposefully incorporates the well-known ADIDAS mark and it was registered long after the mark became well-known to customers also constitute the registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The Complaint was originally filed in English. The Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Korean. The Respondent failed to respond in any language.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Respondent waived any objection to proceeding in English by failing to respond to the Center’s notice sent in both English and Korean. The Panel also notes that the disputed domain name contains the English word, “outdoor”. Moreover, the Panel notes that the Respondent registered the disputed domain name in connection with the “.com” generic Top-Level Domain (“gTLD”), which primarily targets English-speaking Internet users.
On the other hand, the Complainant is unable to communicate efficiently in Korean, and therefore, the administrative proceeding would be unduly delayed should the Complainant be required to submit all documents translated into Korean.
In the interest of efficiency to both Parties, the Panel hereby decides, under paragraph 11 of the Rules, English shall be the language of the administrative proceeding.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as the Panel considers appropriate in accordance with paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
It is undisputed that the Complainant owns the ADIDAS trademark in various countries, including Republic of Korea where the Respondent resides.
The Panel holds that the disputed domain name is identical or confusingly similar to the ADIDAS trademark owned by the Complainant, given that the first part of the disputed domain name, “adidas,” is identical to the Complainant’s distinctive trademark ADIDAS, and the remaining part, “outdoor,” is a generic term that identifies a specific type of goods and services provided and sold by the Complainant.
The addition of a gTLD suffix such as “.com” is generally irrelevant in determining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark (see Universal Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is well established that once a Complainant establishes prima facie showing that none of the three circumstances in paragraph 4(c) of the Policy establishing rights or legitimate interests applies, the burden of production on this factor shifts to the Respondent to rebut the showing (see Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant asserts that the Respondent had no intention to use the disputed domain name in connection with a bona fide offering of goods and services. The Panel notes that the Respondent used the disputed domain name containing the well-known trademark ADIDAS to attract Internet users who are hoping to access the website of the Complainant to a mere parking page where no product or service of the Complainant is promoted or offered. Moreover, given that the reputation of the Complainant is worldwide, it is most likely that the Respondent was well aware of the Complainant’s rights in the ADIDAS mark, and therefore, the Respondent cannot claim that the use of the disputed domain name that incorporates the Complainant’s trademark in its entirety is a bona fide use or a legitimate noncommercial or fair use (see Chanel, Inc. v. Domain Privacy Group, Inc. / Charlene Newport, WIPO Case No. D2009-0081).
Further, the Respondent has no relationship with the Complainant: neither has the Complainant given the Respondent a license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s ADIDAS mark nor has the Respondent done business under the name Adidas.
The Respondent has not submitted any response. Therefore, the Respondent has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel upholds the Complainant’s contention that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
E. Registered and Used in Bad Faith
In the past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), it is well established that when someone registers a domain name, he or she represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In this case, the Panel finds that since the reputation and trademark of the Complainant are worldwide, it is highly unlikely that the Respondent failed to notice the presence of the trademark ADIDAS in the disputed domain name at the time of registration.
Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices in various jurisdictions would have made the Complainant’s registration known to the Respondent.
The Panel also notes that the Complainant’s website promotes and offers for sale its outdoor products under the ADIDAS mark. As the disputed domain name contains both “adidas” and “outdoor,” it is reasonable to assume that the Respondent, at the least, attempted to divert Internet users who hope to access the Complainant’s website to the Respondent’s even though the website is a parking page where no product or service of the Complainant is promoted or offered. The mere fact of attempting to divert Internet users in this misleading manner is further evidence of bad faith (see Big Dog Holdings, Inc. dba Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Claim No. FA 0093554).
Moreover, given the Complainant’s extensive use and registration of the ADIDAS trademark, the Panel holds that it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name.
The conduct described above falls within paragraph 4(b)(iii) of the Policy, and accordingly, the Panel concludes that the Respondent registered the disputed domain name in bad faith.
In light of the foregoing evidence, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <adidasoutdoor.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: January 19, 2014