WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adidas AG v. Domain Manager
Case No. D2014-1414
1. The Parties
Complainant is Adidas AG of Herzogenaurach, Germany, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is Domain Manager of St. Johns, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <adidaswrestling.com> is registered with BigRock Solutions Pvt Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2014. On August 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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" 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 Respondent of the Complaint, and the proceedings commenced on August 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 16, 2014.
The Center appointed Roberto Bianchi as the sole panelist in this matter on September 19, 2014. 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
Complainant is a leading manufacturer, distributor and retailer of athletic and sports equipment, footwear and apparel, including outdoor apparel.
Complainant has used its ADIDAS mark around the world in connection with footwear and athletic gear, including wrestling apparel and equipment. From 1997-2001, the estimated retail sales for Complainant's wrestling products, mostly bearing the ADIDAS mark, totaled nearly USD 23 Million.
Complainant owns numerous trademark registrations for the mark ADIDAS worldwide. In particular Complainant owns the following US trademark registrations for the ADIDAS mark:
- Reg. No. 883,592, registered on January 6, 1970;
- Reg. No. 891,222, registered on May 19, 1970;
- Reg. No. 1,050,759, registered on October 19, 1976;
- Reg. No. 1,253,013, registered on October 4, 1983;
- Reg. No. 1,300,627, registered on October 4, 1984;
- Reg. No. 1,428,946, registered on February 24, 1994;
- Reg. No. 2,138,288, registered on February 24, 1998;
- Reg. No. 3,686,084, registered on September 22, 2009;
- Reg. No. 3,881,463, registered on November 23, 2010;
Complainant also owns several websites at domain names containing the ADIDAS mark, including <www.adidas.com>, <www.shopadidas.com>, <www.miadidas.com>, <www.adidastv.com>, and <www.adidas-group.com>.
The disputed domain name was registered on November 25, 2001.
5. Parties' Contentions
In its Complaint, Complainant contends as follows:
Long before Respondent's registration of the disputed domain name on November 26, 2001, Complainant used and promoted the ADIDAS mark in a wide-variety of media. Complainant has expended millions of dollars in advertising and promoting its products under its ADIDAS trademark in a variety of media throughout the world.
Complainant operates websites that sell and promote a wide-variety of sports and athletic apparel, including wrestling apparel, under the ADIDAS mark. Complainant has also used the ADIDAS mark in connection with its sponsorship of sports tournaments and organizations, as well as world-renowned professional athletes and sports teams. Complainant has speciﬁcally marketed and promoted the Adidas brand in connection with its wrestling footwear and wrestling equipment products since the l970's. From 1997-2001, Complainant spent over USD 900,000 on its marketing efforts in connection with its wrestling apparel and equipment products. As a result, Complainant is well-known as a premier provider of high-quality wrestling-related apparel products and the ADIDAS mark is widely recognized in the wrestling community. Complainant's exclusive licensee operates a website located at "www.outercirclesports.com", which offers and sells wrestling-related athletic apparel and equipment. Moreover, Complainant's exclusive licensee has partnered with a number of high-proﬁle members of the wrestling community to promote the Adidas brand within the wrestling community.
The disputed domain name is identical or confusingly similar to Complainant's ADIDAS mark. Complainant owns valid and enforceable trademark rights in the ADIDAS mark for use in connection with a wide-variety of goods and services, including wrestling apparel, footwear, and equipment, and Complainant acquired these rights long before the date on which Respondent registered the disputed domain name. Several panels have previously recognized Complainant's valid and enforceable rights in its ADIDAS mark. Consumers who see the disputed domain name are certain to associate it with Complainant because it incorporates the ADIDAS mark in its entirety. In such cases, confusing similarity must be presumed. In fact, the only difference between the ADIDAS mark and the disputed domain name is the addition of the descriptive term "wrestling." It is well established, however, that likelihood of confusion between a mark and a domain name is not eliminated, or even necessarily reduced, by the addition of such descriptive terms. Here, not only does the addition of the generic term "wrestling" fail to distinguish the disputed domain name from Complainant's ADIDAS mark, it actually increases the likelihood of confusion. Internet users encountering the disputed domain name <adidaswrestling.com> almost certainly will think that the website to which it resolves offers ADIDAS-branded wrestling apparel and equipment.
Respondent has no rights or legitimate interests in the disputed domain name. (Complainant's contentions in this regard are discussed in detail below in section 6.B).
Respondent registered and is using the disputed domain name in bad faith. Respondent is not associated with Complainant, is not offering Complainant's products, and is not doing business under the name "Adidas".
Further, Respondent is not engaging in any speech activity in connection with the disputed domain name. Respondent merely is passively holding the disputed domain name and using it to point to a parking page. The only possible conclusion to draw from the foregoing facts is that Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to beneﬁt from the goodwill and fame associated with Complainant's ADIDAS mark. Here, Respondent's bad faith registration and use of the disputed domain name is established by the fact that the disputed domain name purposefully incorporates the well-known ADIDAS mark, and was registered long after this mark became well-known to consumers. Such registration and use of the disputed domain name shows, in and of itself, opportunistic bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
A. Identical or Confusingly Similar
Per its various trademark registrations in the United States (see section 4 above), Complainant has evidenced to the satisfaction of the Panel that it owns trademark rights in the ADIDAS mark.
The Panel notes that the disputed domain name consists of the ADIDAS mark plus the generic term "wrestling". In the Panel's view neither the addition of this term nor the presence of the generic Top-Level Domain ("gTLD") suffix ".com" can avoid a finding of confusing similarity of the disputed domain name to Complainant's mark. It is well-established that the mere addition of a generic term is inapt to distinguish a domain name from a mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9 ("The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.")
Thus, the Panel concludes that the disputed domain name is confusingly similar to Complainant's ADIDAS mark.
B. Rights or Legitimate Interests
Complainant contends that its ﬁrst use and ﬁrst registration of the ADIDAS mark long predate any use Respondent may have made of the disputed domain name <adidaswrestling.com>. The disputed domain name was registered initially on or about November 26, 2001, over 50 years after Complainant ﬁrst used its ADIDAS mark in connection with its footwear, apparel, and sporting equipment and accessories in interstate commerce. Moreover, Respondent registered the disputed domain name more than thirty years after Complainant began offering wrestling equipment to the public. Based on the foregoing considerations, Complainant contends that Respondent is charged with constructive knowledge of Complainant's prior use and trademark rights in the ADIDAS mark. Complainant adds that there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's ADIDAS mark. Also, says Complainant, Respondent has not been commonly known as ADIDAS nor has it done business under that name. Respondent's use of the disputed domain name is not in connection with a bona ﬁde offering of goods or services to the public. Instead, the disputed domain name automatically redirects visitors to a number of websites that offer prizes in exchange for the completion of various surveys. A respondent that uses a disputed domain name simply for the purpose of redirecting trafﬁc to the respondent's website and to other sites is not making a bona ﬁde offering of goods or services to the public. In other instances, the disputed domain name redirects visitors to a website that appears to prompt all visitors to download malware onto their computers. Such use is also not a bona ﬁde use of the disputed domain name. Here, Respondent's use of the disputed domain name is not legitimate commercial speech, because no attempt to communicate via the disputed domain name has been made. In view of the extensive use and widespread recognition of Complainant's mark, and the fact that Respondent has no rights in this mark, Complainant believes that Respondent is not using the disputed domain name for any legitimate noncommercial or fair use purpose, but rather for proﬁt. Such use of the disputed domain name does not constitute a legitimate, bona ﬁde offering of goods or services. Finally, Complainant contends that the fact that Respondent registered the disputed domain name well-after Complainant has made extensive use of the ADIDAS mark, establishes that Respondent has no legitimate rights or interest in the disputed domain name.
The Panel notes that, as evidenced by Complainant, until recently the disputed domain name automatically redirected Internet users to various websites offering prizes in exchange for the completion of surveys. In the opinion of the Panel this use of Complainant's mark in the disputed domain name to obtain valuable personal data from visitors presumably attracted by Complainant's well-known mark is neither a bona fide nor a fair use of the disputed domain name. See The Coca-Cola Company v. Ben Johnson, WIPO Case No. D2009-1718 ("The only evidence of use […] is a screenshot provided by the Complainant, and […] reports by the Complainant's customers that they received an email that told them that they had won a contest and a link in the email directed them to a web site at the Domain Name where personal information was solicited from them. This activity is clearly not a bona fide offering of goods or services.")
It is the consensus view amongst WIPO Panels that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and that once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. See "WIPO Overview 2.0", paragraph 2.1.
The Panel believes that Complainant's contentions and the available evidence, taken together, are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Moreover, presently the disputed domain name resolves to a blank web page, a fact that in the Panel's opinion suggests that apart from attempting at eliciting personal data from Internet users, no other use of the disputed domain name was ever contemplated by Respondent.
Given that Respondent has not come forward with any explanation of its reasons for having registered the disputed domain name containing the well-known mark ADIDAS, and that the website at the disputed domain name does not allow for the inference that Respondent may have a right or legitimate interest, the Panel concludes that Complainant has made out its case that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant has shown that it began using and registered its ADIDAS marks long prior to Respondent's registration of the disputed domain name. See section 4 above. The Panel also recognizes that as a result of Complainant's extensive marketing efforts, advertising and investments, the ADIDAS mark, as previous UDRP panels have found, is well-known. See e.g. adidas-Salomon AG v. Mti Networks Ltd, WIPO Case No. D2005-0258 (finding that complainant Adidas has a wide reputation in the trademark ADIDAS and that it is most likely that the respondent was aware of the complainant's trademark ADIDAS when registering the domain name at issue); see also Adidas-Salomon AG v. Digi Real Estate Foundation, WIPO Case No. D2004-1079 ("The Complainant's representation that registrations of domain names containing such well known trademarks can constitute bad faith is accepted by the panel. In the absence of any response, it is impossible to give consideration to any possibility that there can have been a sound reason for the adoption of the domain names in question by the Respondent.") Moreover, the addition in the disputed domain name of the term "wrestling" to Complainant's mark strongly suggests that Respondent knew that Complainant's mark also protects wrestling footwear and apparel. The Panel concludes that Respondent was aware of Complainant's ADIDAS mark and had this mark in mind when it registered the disputed domain name. In the circumstances of this case this means that the registration of the disputed domain name was in bad faith.
It appears that Respondent, by using the disputed domain name as described above, created the impression amongst Internet users, presumably looking for Complainant or for its wrestling products, that the "www.adidaswrestling.com" website belongs to or is run by Complainant, thus allowing Respondent to elicit valuable personal data from those users.
The Panel believes that since personal data are a valuable commodity, Respondent clearly had a purpose of commercial gain, as required by Policy paragraph 4(b)(iv). See AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455 ("[…] Respondent is […] impersonating Complainant and trying to elicit personal information from Internet users presumably looking for Complainant and its WOODLOC mark. The purposes for this behavior were neither stated on Respondent's website nor elsewhere explained by Respondent, but it is rather obvious that personal information obtained from Internet users is a valuable commodity in an age of marketing through massive emailing. Given the renown of Complainant's WOODLOC mark and products, it is evident that Respondent has availed itself of this renown to elicit these data."). See also The Boston Consulting Group, Inc v. Freedman Alexander, WIPO Case No. D2012-1061 ("The Panel has already found that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights and that the combination of the initials "BCG" with the abbreviation "corp" is likely to trick members of the public into believing that the domain name is the URL for a site that contains information about the Complainant. Once they are on the site, some of those visitors will be tricked into disclosing their banking details and other personal data all of which have value. Thus, all the requirements of paragraph 4(b)(iv) are fulfilled.")
The Panel concludes that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's ADIDAS mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on Respondent's website or location, which is a circumstance of bad faith registration and use of the disputed domain name pursuant to Policy paragraph 4(b)(iv).
Thus, the third element of the Policy is met.
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 <adidaswrestling.com> be transferred to the Complainant.
Date: October 3, 2014