WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
All Star C.V. v. Baker Barry, Baker Barry
Case No. D2020-1132
1. The Parties
The Complainant is All Star C.V., United States of America (“United States”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Baker Barry, Baker Barry, Australia.
2. The Domain Name and Registrar
The disputed domain name <conversesingapores.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned names and Numbers (ICANN) on October 24, 1999 (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on September 28, 2013 and in effect as of July 31, 2015 (“the Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules”) of the WIPO Arbitration and Mediation Center (“the Center”) in effect as of July 31, 2015.
The Complaint was filed with the Center on May 6, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2020, 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.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules, and 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 May 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2020.
The Center appointed Haig Oghigian as the sole panelist in this matter on June 4, 2020. 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.
The Panel notes that the Complainant has requested that English be the language of proceeding in this matter. In accordance with paragraph 11 of the Rules, based on the case file, and in the absence of any comments from the Respondent in this matter, the Panel decides that English be the language of proceeding, and will submit the decision in English.
4. Factual Background
The administrative Panel finds the following as uncontested facts:
The Complainant, the brand owner and a subsidiary of Nike, Inc., was founded in 1908 in Massachusetts, United States, whereas now it is a company organized and existing under the laws of Oregon, United States.
The Complainant is the proprietor of numerous registered trademarks containing CONVERSE and/or ALL STAR (words / words and design) in countries all around the globe, for example:
- Algeria trademark no. 47527 CONVERSE, registered on May 1, 2015;
- Andorra trademark no. 31984 CONVERSE, registered on February 4, 2010, in classes 18 and 25;
- Andorra trademark no. 31985 CONVERSE ALL STAR AND DESIGN, registered on February 4, 2020, in classes 18 and 25;
- Austria trademark no. 78300 CONVERSE and Design, registered on April 30, 2014, in classes 25 and 28;
- Austria trademark no. 107844 CONVERSE CHUCK TAYLOR ALL STAR AND DESIGN, registered on October 25, 2013, in classes 18 and 25;
- Canada trademark no. TMA161005 CONVERSE, renewed on February 7, 2014, registered on February 7, 1969, in class 25;
- Cyprus trademark no. 33644 CONVERSE ALL STAR CHUCK TAYLOR AND DESIGN, registered on March 15, 2012, in class 25;
- Denmark trademark no. VR196803332 CONVERSE, registered on December 6, 1968, in class 25;
- Germany trademark no. DE39955026 CONVERSE ALL STAR CHUCK TAYLOR AND DESIGN, registered on December 1, 1999, in class 9;
- European Union (“EU”) trademark no. 008631772 CONVERSE and Design, registered on March 20, 2014, in classes 18, 25 and 35;
- EU trademark no. 007600117 CONVERSE, registered on December 11, 2009, in classes 16,18, 25 and 35;
- EU trademark no. 009591272 CONVERSE, registered on April 26, 2011, in classes 9 and 14;
- Indonesia trademark no. IDM000560963 CONVERSE, registered on February 6, 2017, in class 9;
- Madagascar trademark no. 14918 CONVERSE ALL STAR (word and design), registered on June 4, 2014;
- Singapore trademark no. T1311886G CONVERSE, registered on July 25, 2013, in classes 9 and 25;
- Spain trademark no. M2829398 CONVERSE, registered on March 11, 2008, in class 35;
- United States trademark no. 1490262 CONVERSE CHUCK TAYLOR ALL STAR AND DESIGN, renewed on May 31, 2018 registered on May 31, 1988, in class 25.
The Complainant uses these trademarks “in respect of a large variety of goods, including footwear, clothing, headgear and bags,” which are sold in countless countries, including Australia; Brazil; Canada, Czech Republic; China; Denmark; France; Germany; Greece; Hong Kong, China; Indonesia; Italy; Japan; Malaysia; Mexico; Netherlands; Norway; Republic of Korea; Russian Federation; Spain; Sweden; Thailand; United Kingdom, and the United States generating millions of dollars in revenue each year.
The Complainant’s registered rights pre-date the registration of the disputed domain name and enjoy significant recognition worldwide in relation to a range of goods and services.
Apart from acquiring extensive registered trademark rights, the Complainant has built “a significant reputation and a vast amount of goodwill in the CONVERSE brand worldwide in relation to a range of goods and services.” Testament to this is the fact that some of the most recognizable faces on the planet have worn / used the Complainant’s merchandise. Furthermore, various publications have consistently considered one of the Complainant’s products (the Chuck Taylor All Star sneaker) as one of the “coolest” and “most iconic sneakers of all time”.
The Respondent registered the disputed domain name <conversesingapores.com> on April 24, 2020. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant claims the Respondent’s disputed domain name <conversesingapores.com> is confusingly similar to its own CONVERSE trademarks and ownership rights, as it incorporates them completely. The addition of “singapores”, according to the Complainant, “clearly refers to a section of one of the Complainant’s core markets,” and “leads the average Internet user to believe that the disputed domain name is owned by the Complainant and relates to the sale of genuine CONVERSE goods in the Singaporean and wider Asian market”.
Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name.
Finally, considering the level of fame of the CONVERSE brand, the fact that the disputed domain name contains the identical “converse” element, and that it does not resolve to an active website, the Respondent’s use of the disputed domain name is an “obvious example of bad faith”.
The Complainant, therefore, requests the disputed domain name be transferred to the Complainant accordingly.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the transfer of the disputed domain name may be ordered if the Complainant demonstrates three elements:
(A) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the domain name; and
(C) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <conversesingapores.com> incorporates the Complainant’s trademark in its entirety. It differs from the Complainant’s trademark only insofar as it adds the word “singapores”.
Previous UDRP panels have recognized the notoriety of the CONVERSE trademarks and the confusing similarity that may arise from the use of a domain name containing the word “converse”, such as (Converse, Inc. v. Feng Ye/Denny Liao, WIPO Case No. D2011-1405<conversezone.com>); (Converse, Inc. v. Forum LLC, WIPO Case No. D2007-0926<conversehighstops.com>); (Converse, Inc. v. Perkins Hosting, WIPO Case No. D2005-0350<conversebasketball.com>); (All Star C.V. v. George, WIPO Case No. D2018-0414 <converseusa.com>).
Considering all of the foregoing, the Panel determines that the disputed domain name is confusingly similar to the Complainant’s CONVERSE trademarks.
B. Rights or Legitimate Interests
The Respondent is not known by the name CONVERSE and holds no trademarks in its name. Furthermore, the disputed domain name is not being used in relation to a bona fide offering of goods or services, as it does not even resolve to an active website. Moreover, the disputed domain name carries a risk of implied affiliation (section 2.5.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Noting the nature of the disputed domain name, the uniqueness of Complainant’s name, and the fact that the disputed domain name does not have any active website, it negatively reflects on the Respondent’s conduct. The Respondent has not responded to provide any evidence of legitimate use. Accordingly, based on the available record and Policy, paragraph 4(a)(ii), the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that over the course of the past hundred years the Complainant has developed a highly recognizable brand. The idea that the Respondent was unaware of the Complainant’s activities and the existence of the trademarks, and just happened to register the confusingly similar disputed domain name <conversesingapores.com>, is beyond belief.
The Panel’s finding of bad faith use, within the meaning of paragraph 4(a)(iii), on the part of the Respondent is justified in light of the following:
(i) the nature of the disputed domain name;
(ii) the colossal scope of the Complainant’s business and consequent distinctiveness and prominence of its brand;
(iii) the inactive status of the disputed domain name; and
(vi) the Respondent’s failure to challenge the Complainant’s contentions.
Accordingly, the Panel finds that the disputed domain name was registered and is being used 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, <conversesingapores.com> be transferred to the Complainant.
Date: June 8, 2020