WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Diadora Sport Srl v. Anchao Agrgh Rst

Case No. D2016-1632

1. The Parties

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

The Respondent is Anchao Agrgh Rst of China.

2. The Domain Name and Registrar

The disputed domain name <diadorachina.com> 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, 2016. On August 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2016, 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 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 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 16, 2016.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 22, 2016. 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 a sport shoe, clothing and accessories manufacturer, founded in Italy in 1948, and is the owner of the DIADORA marks. The Complainant's DIADORA-branded products are distributed in more than 60 countries and are sold in more than 14,500 retail points around the world. The Complainant's products are currently worn by a number of professional athletes such as George Weah, Roberto Baggio, Giuseppe Signori, Francesco Totti, Roy Keane, and Antonio Cassano. Its products have also been worn in connection with major sports events including by Gustavo Kuerten at the Roland-Garros international tennis championship and by the Italian Olympic team during the 2016 Olympic Games in Rio de Janeiro, Brazil.

The Complainant owns several trademark registrations for its DIADORA marks, including International Registration Nos. 682095 for DIADORA (registered on July 31, 1997), 751069 for DIADORA (registered on January 10, 2001), 460693 for DIADORA (registered on April 27, 1981), 720189 for DIADORA UTILITY (registered on August 6, 1999), and 751980 for UTILITY DIADORA (December 22, 2000), European Union Trade Mark ("EUTM") Nos. 339093 for DIADORA (registered on January 7, 1999), 1768480 for DIADORA (registered on November 30, 2001), and UTILITY DIADORA 1753482 (July 23, 2001). The Complainant also owns a large number of domain names incorporating its DIADORA mark, including <diadora.com>, <diadora.shoes>, <diadora.us>, <utilitydiadora.clothing>, and <diadora.co.uk>, among others.

The Respondent registered the disputed domain name <diadorachina.com> on December 27, 2015. The disputed domain name resolves to a website in Chinese featuring ads and links to third-party websites. In addition to the disputed domain name, the Respondent also has previously registered several domain names incorporating third-party trademarks including <kappa-sports.com>, <lotto-sports.com>, <pumacn.com>, <reebokchina.com>, <conversecn.com>, <dcshoecousecn.com>, <filacn.com>, <sauconychina.com>, <vans-sport.com>, and many others.

5. Parties' Contentions

A. Complainant

The Complainant states that the disputed domain name is identical or confusingly similar to the DIADORA marks, in which the Complainant has rights. The disputed domain name fully incorporates the DIADORA mark and pairs it with the geographic term "China". The addition of "China" to the disputed domain name adds to consumer confusion because people will most likely believe that the disputed domain name is associated with the sale of the Complainant's products in China. The addition of a generic Top-Level Domain ("gTLD") to the disputed domain name does not avoid confusing similarity.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has acquired no trademark or service marks rights in the mark DIADORA. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has never granted the Respondent authorization, license or any right whatsoever to use the Complainant's DIADORA trademarks. The Respondent is not commercially linked to the Complainant.

The disputed domain name was registered and is being used in bad faith. The DIADORA trademarks are so widely known that it is inconceivable that the Respondent ignored the Complainant's prior rights to the DIADORA marks. It is clear that the Respondent had the Complainant's name and trademark in mind when registering the disputed domain name. The Respondent's choice of the disputed domain name cannot be considered an accident and must have been influenced by the fame of the Complainant's trademarks. A simple Internet search yields only results related to the Complainant. The Respondent knew, or should have known, that registration and use of the disputed domain name would be in violation of the Complainant's rights.

There is no possible use of the disputed domain name that could be in connection with a bona fide offering of goods or services. Any use of the DIADORA trademark would amount to trademark infringement and would damage the repute of the Complainant's trademark. Any actual use of the domain name would de facto amount to bad faith.

The Complainant further states that passive holding of a domain name does not prevent a finding of bad faith. A panel must consider all of the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of cumulative circumstances that are indicative of bad faith include the Complainant having a well-known trademark, no response to the Complaint having been filed, and the registrant's concealment of its identity. A panel may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration and vice versa. "Use in bad faith" is not limited to positive action but can also include inaction.

Finally, the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name and/or is a well-known cyber squatter. This is a clear indication of bad faith. The Respondent has previously registered several domain names reproducing or integrating famous trademarks, including, <kappa-sports.com>, <lotto-sports.com>, <pumacn.com>, and <reebokchina.com>, among others.

In light of all of the circumstances, the Complainant contends that the disputed domain name was registered and is being used in bad faith by the Respondent.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in Paragraph 4(a):

(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.

For the reasons set out below, the Panel finds that the Complainant has met this burden.

A. Identical or Confusingly Similar

The Complainant has rights in the DIADORA mark. The Complainant has established that it is the registered owner of various trademark registrations for the DIADORA marks. The Panel accepts that the Complainant's DIADORA mark is well known.

The Panel finds that the disputed domain name is confusingly similar to the Complainant's DIADORA mark. The threshold question for confusing similarity under the UDRP involves the comparison between the trademark and the domain name itself to ascertain the presence of the relevant mark in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.2. The disputed domain name consists of the words "Diadora"-identical to the Complainant's DIADORA mark-and "China." The addition of a geographically descriptive term "China" does not dispel a finding of confusing similarity. See Compagnie Générale des Establissements Michelin-Michelin & Cie v. Tgifactory, WIPO Case No. D2000-1414; see also Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei, WIPO Case No. D2014-1093. A country name included in a disputed domain name is not a prominent part because it is likely to be recognized as indicating an overseas website of the disputed domain name. See Inter IKEA Systems B.V. v. Muhannad Mayyas, WIPO Case No. D2016-0067; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, WIPO Case No. D2015-0210. Indeed, it may add to consumer confusion for that same reason. Additionally, the gTLD ".com" is irrelevant in determining confusing similarity because it has no impact on the overall impression of the dominant portion of the name "diadora". See Rollerblade, inc. v. Chris McCrady, WIPO Case No. D2000-0429. The disputed domain name is confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or

(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use its DIADORA trademark or to register any domain name incorporating that trademark. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant's DIADORA mark is long established and widely known around the world. In the absence of any evidence to the contrary, knowledge of the Complainant's rights in the DIADORA mark may be imputed to the Respondent at the time of registration of the disputed domain name. The terms "Diadora China" bear no obvious relationship to the Respondent's activities in connection with the disputed domain name. "The inevitable conclusion is that these words are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant." See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. No rights or legitimate interests can be found where the Respondent would not have chosen the disputed domain names unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda, WIPO Case No. D2001-0067. The Respondent's incorporation of the Complainant's trademark in the disputed domain name appears to seek to create such an impression. The Respondent's use of the disputed domain name in association with a website featuring links to third parties does not, in the Panel's view, give rise to rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that the respondent has registered or has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

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

(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The Respondent must have been aware of the Complainant and its trademarks at the time of registration of the disputed domain name. The Complainant's DIADORA marks are well known throughout the world. The Complainant has used the DIADORA marks in commerce for decades prior to the registration of the disputed domain name. Additionally, the Complainant owns many trademark registrations around the globe. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before acquiring a domain name, a simply Internet search for DIADORA would have yielded many obvious references to the Complainant and its DIADORA-branded goods. Bad faith registration can be inferred from the Respondent's registration of a domain name incorporating a well-known mark of which the Respondent must have been aware without any evident right to do so. See Hurruyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C., WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala, WIPO Case No. D2008-1059.

The Panel finds that given the totality of the circumstances in this case, the Respondent is using the disputed domain name in bad faith. Given that the disputed domain name is identical to the Complainant's extensively used and well-known mark, the Panel finds that the Respondent must have been aware that Internet users would be led to believe that the disputed domain name and resolving website would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees, supra. The prominent presence of links to third-party websites on the Respondent's website may result in illegitimate commercial gain on the part of the Respondent, through such a misleading association with the Complainant's trademark. Moreover, the Respondent's holding of the disputed domain name prevents the Complainant from reflecting its mark in the same domain name. See id. The Respondent is holding several other domain names that are comprised of, in part, other well-known third-party marks, prima facie evidence that the Respondent regularly has been engaging in a pattern of abusive registrations.

In light of the above and in the absence of any circumstances that indicate that the Respondent has legitimate interests in using the disputed domain name, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

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 disputed domain name <diadorachina.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: October 4, 2016