adidas AG and adidas America, Inc. v. Texas International Property Associates - NA NA
Claim Number: FA1005001322490
Complainant is adidas
AG and adidas
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shopadidasgolf.com>, registered with Compana.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2010.
On May 4, 2010, Compana confirmed by e-mail to the National Arbitration Forum that the <shopadidasgolf.com> domain name is registered with Compana and that Respondent is the current registrant of the name. Compana has verified that Respondent is bound by the Compana registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shopadidasgolf.com. Also on May 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shopadidasgolf.com> domain name is confusingly similar to Complainant’s ADIDAS mark.
2. Respondent does not have any rights or legitimate interests in the <shopadidasgolf.com> domain name.
3. Respondent registered and used the <shopadidasgolf.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, adidas AG, is a German joint stock company. Complainant, adidas America, Inc., is an American business corporation. Hereinafter, these entities will be collectively referred to as Complainant. Complainant is an international manufacturer, distributor, and retailer of athletic and sports equipment, footwear, and apparel. Complainant has continuously and extensively used its ADIDAS mark since as early as 1952. Complainant also holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ADIDAS mark (e.g., Reg. No. 2,138,288 registered February 24, 1998).
Respondent registered the <shopadidasgolf.com> domain name on November 2, 2005. The disputed domain name resolves to a website that list links to third-party websites, some of which directly compete with Complainant.
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See Mary’s Futons, Inc. v.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the ADIDAS mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,138,288 registered February 24, 1998). The Panel finds this registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant claims Respondent’s <shopadidasgolf.com> domain name is confusingly similar to its ADIDAS mark. Respondent incorporates Complainant’s mark in its entirety in the disputed domain name. Respondent then adds the descriptive terms “shop” and “golf,” which relate to the goods offered under the mark, and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds these additions do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds Respondent’s <shopadidasgolf.com> domain name is confusingly similar to Complainant’s ADIDAS mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case showing Respondent lacks rights or legitimate interests in the disputed domain name. The burden then shifts to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. Prior Panels have viewed a Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent failed to submit a Response, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed <shopadidasgolf.com> domain name under Policy ¶ 4(c).
Complainant asserts that it has not authorized or licensed Response to use its ADIDAS mark in a domain name. Furthermore, the WHOIS information lists the registrant of the disputed domain name as “Texas International Property Associates.” Without evidence to the contrary, the Panel finds Respondent is not commonly known by the <shopadidasgolf.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent has not used, nor is there any indication Respondent is making preparations to use, the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial fair use. Instead, Complainant argues Respondent uses the disputed domain name to host hyperlinks to various third-party websites, some of which directly compete with Complainant. The Panel finds Respondent most likely profits from this use through the receipt of “click-through” fees, gained whenever an Internet user clicks on one of the links on Respondent’s website. Therefore, the Panel finds Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant provides evidence that Respondent has been
subject to UDRP proceedings in which the Panel required Respondent to transfer
the respective domain name. See Mary’s Futons, Inc. v.
Complainant argues Respondent’s <shopadidasgolf.com> domain name diverts Internet customers or potential customers seeking information about Complainant to Respondent’s website. The Panel finds Respondent’s use of a confusingly similar domain name to redirect Internet users to Respondent’s website, which provides links to third-party websites that compete with Complainant, disrupts Complainant’s business. Therefore, the Panel finds this behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also contends Respondent has intentionally
attempted to attract, presumably for commercial gain, Internet users to
Respondent’s website by knowingly creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s website. The Panel finds
Respondent uses the disputed domain name to confuse consumers as to the source
and origin of the links listed on Respondent’s website. Furthermore, Respondent most likely profits
from this use through the receipt of click-through fees. Therefore, the Panel finds this behavior
provides additional evidence of registration and use in bad faith pursuant to
Policy ¶ 4(b)(iv).
See
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopadidasgolf.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 8, 2010
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