adidas AG and adidas America, Inc. v. Toshi Amori
Claim Number: FA1006001329852
Complainant is adidas AG and adidas America, Inc. (“Complainant”), represented by David K. Friedland, of Lott & Friedland, P.A., Florida, USA. Respondent is Toshi Amori (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <adidasoutlet.com> and <adiusa.com>, registered with Dynadot.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2010.
On June 15, 2010, Dynadot confirmed by e-mail to the National Arbitration Forum that the <adidasoutlet.com> and <adiusa.com> domain names are registered with Dynadot and that Respondent is the current registrant of the names. Dynadot has verified that Respondent is bound by the Dynadot 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 June 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@adidasoutlet.com and postmaster@adiusa.com. Also on June 17, 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 July 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 "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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <adidasoutlet.com> domain name is confusingly similar to Complainant’s ADIDAS mark.
Respondent’s <adiusa.com> domain name is confusingly similar to Complainant’s ADISTAR mark.
2. Respondent does not have any rights or legitimate interests in the <adidasoutlet.com> and <adiusa.com> domain names.
3. Respondent registered and used the <adidasoutlet.com> and <adiusa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, adidas AG and adidas America, Inc., is an internationally recognized manufacturer, distributor, and retailer of athletic equipment, footwear, and apparel. Complainant has marketed these goods under its ADIDAS and ADI family of marks since its formation in Germany in 1949. Complainant holds multiple trademark registrations for its mark with the United States Patent and Trademark Office (“USPTO”):
ADIDAS 883,592 January 6, 1970
ADIDAS 891,222 May 19, 1970
ADIDAS 1,050,759 October 19, 1976
ADIDAS (design) 1,253,013 October 4, 1983
ADIDAS 1,300,627 October 16, 1984
ADIDAS 1,428,946 February 17, 1987
ADIDAS 2,138,288 February 24, 1998
ADIDAS 3,255,820 June 26, 2007
ADISTAR 1,148,984 March 24, 1981
ADILETTE 1,184,892 January 5, 1982
ADIPRENE 2,054,934 April 22, 1997
ADIWEAR 2,092,780 September 2, 1997
ADIFIT 2,593,646 July 16, 2002
ADIGIRL 3,692,068 October 6, 2009
Respondent, Toshi Amori, registered the <adidasoutlet.com>
domain name on September 15, 2008
and the <adiusa.com> domain name on December 9, 1994. The <adidasoutlet.com> domain
name resolves to a website displaying hyperlinks to various third-party
websites offering shoes and clothing in direct competition with
Complainant. The <adiusa.com> domain
name resolves to a website containing hyperlinks to third-party websites
unrelated to Complainant.
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.
The Panel finds that Complainant’s extensive registration of its ADIDAS and ADI family of marks is conclusive evidence of Complainant’s rights in the marks pursuant to Policy ¶ 4(a)(i). The Panel further finds that it is irrelevant that Complainant has not registered the marks in the country where Respondent operates or resides and that evidence of registration with the USPTO is adequate. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <adidasoutlet.com> domain name is confusingly similar to
Complainant’s ADIDAS mark. Respondent’s
disputed domain name incorporates the entirety of Complainant’s mark and merely
adds the generic term “outlet” and the generic top-level domain (“gTLD”)
“.com.” The Panel finds that these
alterations are insufficient to avoid a finding of confusing similarity
pursuant to Policy ¶ 4(a)(i). See 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
Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level
domain “.com” is insufficient to differentiate a disputed domain name from a
mark). Therefore, pursuant to Policy ¶ 4(a)(i),
the Panel finds that Respondent’s <adidasoutlet.com> domain name is confusingly similar to
Complainant’s ADIDAS mark.
Respondent’s <adiusa.com>
domain name is confusingly similar to Complainant’s ADISTAR. Respondent’s disputed domain name
incorporates the dominant portion of Complainant’s ADI marks (“adi”) removes
the “star” portion and appends the geographic term “usa” and the gTLD
“.com.” The Panel finds that these are
merely minor modifications which do not sufficiently distinguish Respondent’s
disputed domain name from Complainant’s mark.
See Maple Leaf Sports & Entm’t Ltd. v.
Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain
name <leafs.org> is confusingly similar to the complainant’s marks, where
the complainant holds many trademarks that contain the term “LEAFS”); see also Gannett Co. v. Chan, D2004-0117
(WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of
a well-known mark, combined with a geographically descriptive term or phrase,
is confusingly similar to the mark.”); see
also Jerry Damson, Inc. v. Tex. Int’l
Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10,
2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does
not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that Respondent’s <adiusa.com>
domain name is confusingly similar
to Complainant’s ADI marks for the purposes of Policy ¶ 4(a)(i).
The Panel finds that
Policy ¶ 4(a)(i) is satisfied.
Complainant contends that Respondent lacks rights and
legitimate interests in the disputed domain names. Pursuant to the requirements of Policy ¶
4(a)(ii), Complainant must first establish a prima facie case in support of its contentions before the burden
shifts to Respondent to prove it has either rights or legitimate interests in
the disputed domain names. The Panel
finds that Complainant’s Complaint sufficiently establishes a prima facie case and thus the burden has
effectively shifted to Respondent to prove rights or legitimate interests. Respondent has failed to respond to these
proceedings from which the Panel infers that Respondent indeed lacks rights and
legitimate interests in the disputed domain names. See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name); 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.”). Nevertheless, the Panel will examine the
record in light of the factors outlined in Policy ¶ 4(c) to determine whether
Respondent has rights or legitimate interests in the disputed domain names.
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information provided by Complainant indicates that the registrant of the disputed domain names is “Toshi Amori.” Additionally, Complainant asserts that it has not authorized or licensed Respondent to use or register a domain name which incorporates Complainant’s ADIDAS or ADI family of marks. Complainant’s assertions coupled with the lack of any evidence in the record to the contrary supports the Panel’s finding that Respondent is not commonly known by the disputed domain names pursuant to 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 alleges that Respondent lacks rights and legitimate interests in the <adidasoutlet.com> domain name because it resolves to a website that displays competing links to third-party businesses in the athletic shoes and apparel industry. Complainant alleges, and the Panel presumes, that Respondent receives click-through fees from the displayed links. The Panel finds that such a use is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) and is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); 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).
Complainant also alleges that Respondent lacks rights and
legitimate interests in the <adiusa.com> domain name. Respondent’s disputed domain name resolves to
a website that displays third-party links to websites unrelated to Complainant
and its business. Complainant asserts,
and the Panel presumes, that Respondent receives click-through fees from the
displayed links. The Panel finds that
this is also not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use for the purposes of 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
Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent’s <adidasoutlet.com> domain name resolves to a website that displays third-party commercial links to Complainant’s direct competitors in the athletic shoe and apparel industry. The Panel finds that Respondent’s diversion of Complainant’s intending customers to competing websites constitutes a disruption of Complainant’s business as Internet users may purchase goods from a competitor rather than from Complainant. The Panel finds this to be evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); 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)).
Respondent registered and is using the <adidasoutlet.com> and <adiusa.com> domain names in bad faith because Respondent is using them to display links to various other sites that offer products and services, including some in direct competition with Complainant. Respondent no doubt receives click-through fees from the displayed third-party links. The Panel therefore finds that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
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 <adidasoutlet.com> and <adiusa.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 21, 2010
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