WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diadora Sport S.r.l. v. Emma Butler

Case No. D2017-1572

1. The Parties

The Complainant is Diadora Sport S.r.l. of Caerano di San Marco, Italy, represented by Brandstock Domains GmbH, Germany.

The Respondent is Emma Butler of South Launceston, Tasmania, Australia.

2. The Domain Name and Registrar

The disputed domain name <diadorar.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 5, 2017.

The Center appointed David Taylor as the sole panelist in this matter on September 15, 2017. 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 an Italian sports footwear, clothing and accessories manufacturer founded in 1948. It owns many trade mark registrations for DIADORA in many jurisdictions around the world, including but not limited to Australian Trade Mark Registration No. 426930, for DIADORA, registered on March 17, 1983 (for goods in classes 18, 25 and 28) and European Union Trade Mark ("EUTM") Registration No. 000339093, for DIADORA, registered on January 7, 1999 (for goods in classes 18, 25 and 28) and EUTM Registration No. 001768480, for DIADORA (and logo), registered on November 30, 2001 (for goods in class 9). The Complainant's official website is available at "www.diadora.com".

The Respondent is an individual that appears to be based in Australia. No further details about the Respondent are known.

The Domain Name was registered on July 23, 2017. At the time the Complaint was filed, it was resolving to a website offering clothing, underwear and handbags for sale.

5. Parties' Contentions

A. Complainant

The Complainant states that it is a sports footwear, clothing and accessories manufacturer founded in Italy in 1948, with a distribution network including more than 60 countries in the world. The Complainant asserts that its DIADORA products are distributed in over 14,500 retail points over the world and that these products have been and currently are worn by a number of high-profile sport players. The Complainant states that it is known worldwide for its high-quality sports clothes and footwear products.

The Complainant asserts that the Domain Name is confusingly similar to the Complainant's DIADORA trade mark as it wholly incorporates the Complainant's trade mark. The Complainant states that the only difference between its DIADORA trade mark and the Domain Name is the letter "r" at the end and that the presence of the letter "r" does not exclude a risk of confusion as the dominant element of the Domain Name is the Complainant's DIADORA trade mark.

The Complainant further asserts that the Respondent does not have rights or legitimate interests in the Domain Name. The Complainant highlights that the Respondent is not commonly known by the Domain Name and has not acquired trade mark rights in the term "diadora". The Complainant further argues that the Respondent's use of the Domain Name is not in connection with a bona fide offering of goods or services. The Complainant also argues that it has never authorized the Respondent to make any use of its trade mark and that the Respondent is not commercially linked to the Complainant. The Complainant argues that despite the absence of the Complainant's authorization, the Respondent is using the Domain Name to resolve to a website offering low-quality women's underwear, clothes and footwear for sale. The Complainant argues that the Respondent is using the Domain Name to gain the attention of consumers for the sale of its products and to take advantage of the well-known character of the Complainant's DIADORA trade mark. The Complainant also argues that the type of images displayed on the website associated with the Domain Name is damaging the image and reputation of the Complainant's trade mark, which is known for its high-quality clothes and footwear products. The Complainant states that none of the circumstances which may demonstrate that a respondent can prove rights or legitimate interests are present in this case.

The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith. The Complainant argues that its DIADORA trade mark is widely well-known and that it would be inconceivable that the Respondent would have ignored the Complainant's earlier rights over the term DIADORA at the time of registration, particularly as the Respondent is located in Australia, where the Complainant's trade mark has a strong presence (the Complainant has supplied evidence of its presence in the Australian market). The Complainant therefore argues that the Respondent had the Complainant's trade mark in mind at the time of registration of the Domain Name. The Complainant also asserts that the Respondent's choice of the Domain Name could not have been accidental but rather was influenced by the fame of the Complainant's trade mark. The Complainant further argues that the Respondent's use of the Domain Name is in bad faith, as the Respondent's website was resolving to a website displaying the Complainant's trade mark (and logo) to sell woman's underwear, clothing and footwear. The Complainant explains that on August 2, 2017, the Complainant's lawyers sent a cease-and-desist letter by email to the Respondent. The Respondent, however, did not reply to the Complainant's email. The Complainant explains that as the website associated with the Domain Name was set up via the platform Shopify (which allows individuals to create online stores to sell their goods), the Complainant's lawyers requested Shopify to remove the sign "DIADORAR" from the Respondent's website and the Complainant's trade mark and logo was removed. Finally, the Complainant holds that the Respondent's non-response to the Complainant's cease-and-desist letter is also evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark 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.

Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis 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. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant's contentions. The Respondent's failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided adequate evidence that it has registered trade mark rights in the term DIADORA in connection with clothing and footwear. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trade mark. The Domain Name incorporates the Complainant's DIADORA trade mark in its entirety with the addition of the letter "r" at the end. Prior panels deciding under the Policy have held that when a domain name wholly incorporates a complainant's trade mark, it is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. The addition of the letter "r" at the end does not diminish the confusing similarity with the Complainant's trade mark as the Complainant's trade mark is clearly recognizable and is the dominant component of the Domain Name.

The ".com" Top-Level Domain is generally disregarded under the identity or confusing similarity test as it is a functional element. See section 1.11 of the WIPO Overview 3.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's trade mark.

Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out the following list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

"(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 trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."

A complainant is required to establish a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has alleged that it has not authorised the Respondent to make any use of its DIADORA trade marks and that the Respondent is not affiliated to the Complainant in any way.

The Panel finds that the Respondent's use of the Domain Name, which is confusingly similar to the Complainant's trade mark, to resolve to a website prominently displaying a trade mark and logo that is also highly similar to the Complainant's trade mark and logo for the same business activity (i.e., offering clothing for sale) cannot be considered a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy, as the Respondent is using the Complainant's trade mark to unduly take advantage of the Complainant's rights. See America Online, Inc. v. Fu, WIPO Case No. 2000-1374 (holding that it would be "unconscionable to find a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business").

There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy, and the Complainant has supplied evidence that the Respondent does not own any trade mark rights in the term "diadora" or "diadorar".

The Panel further finds that the Respondent's use of the Domain Name as described above cannot be considered a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraph 4(c)(iii) of the Policy, as the Respondent's activities are clearly commercial in nature.

Finally, in the circumstances of this case, the Respondent's lack of rights or legitimate interests in the Domain Name may also be inferred from the fact that the Respondent has failed to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 ("non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights") and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

"(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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."

As far as bad registration is concerned, the Panel notes that the Complainant has trade mark rights in the term DIADORA that significantly predate the registration date of the Domain Name. The Complainant's trade mark also enjoys a significant degree of distinctiveness in connection with clothing and footwear and has also acquired considerable goodwill and renown in many countries around the world, including in Australia, where the Respondent appears to be based. Given this, together with the nature of the Domain Name, which identically reproduces the Complainant's DIADORA trade mark with the mere addition of the letter "r" at the end and the use to which the Domain Name has been put (as described below), the Panel is persuaded, on balance, that the Respondent had the Complainant in mind at the time of registration of the Domain Name and deliberately registered it to take advantage of the Complainant's rights. The Panel therefore finds that the Respondent registered the Domain Name in bad faith.

The Panel also finds that the Respondent's use of the Domain Name, which is confusingly similar to the Complainant's trade mark, to resolve to a website prominently displaying the term DIADORAR, which is highly similar to the Complainant's trade mark, and offering the same goods and services offered by the Complainant, constitutes a classic example of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trade mark.

Finally, the Panel also draws adverse inferences from the Respondent's failure to respond to the Complainant's cease-and-desist letters and to take part in the present proceedings.

The Panel finds that the Domain Name was registered and is being used in bad faith.

Accordingly, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <diadorar.com>, be transferred to the Complainant.

David Taylor
Sole Panelist
Date: September 22, 2017