adidas AG and adidas America, Inc. v. Adige Wang
Claim Number: FA1007001336305
Complainant is adidas
AG and adidas
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <inadidas.com>, registered with GoDaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2010.
On July 20, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <inadidas.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 July 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@inadidas.com by e-mail. Also on July 22, 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 August 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a manufacturer and distributor of athletic and sports equipment, footwear, and apparel, which has been operating under the ADIDAS mark since 1949.
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its ADIDAS trademark (including Reg. No. 883,592, issued January 6, 1970).
Respondent registered the <inadidas.com> domain name on March 19, 2009.
Respondent’s domain name resolves to a website that offers for sale counterfeit and unauthorized products of Complainant.
Respondent’s <inadidas.com> domain name is confusingly similar to Complainant’s ADIDAS mark.
Respondent is not commonly known by the <inadidas.com> domain name.
Respondent is not authorized or licensed to use Complainant’s ADIDAS trademark in any way.
Respondent does not have any rights to or legitimate interests in the <inadidas.com> domain name.
Respondent registered and uses the <inadidas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
DISCUSSION
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has demonstrated that it has rights in the ADIDAS mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As
the [complainant’s] mark is registered with the USPTO, complainant has met the
requirements of Policy ¶ 4(a)(i).
Further, Complainant is not required to own a trademark
registration in Respondent’s country of residence for purposes of Policy ¶ 4(a)(i). See Renaissance Hotel
Holdings, Inc. v. Renaissance
Respondent’s <inadidas.com> domain name is
confusingly similar to Complainant’s ADIDAS mark pursuant to Policy ¶ 4(a)(i). The disputed
domain name contains Complainant’s entire mark, and merely adds the generic term
“in” and the generic top-level domain (“gTLD”) “.com.” These additions to distinguish the disputed
domain name from Complainant’s mark under the Policy. See
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not possess rights to
or legitimate interests in the <inadidas.com> domain name under
Policy ¶ 4(a)(ii).
Complainant is required to produce a prima
facie case in support of these allegations.
Once Complainant has produced such a prima facie case, the burden of proof
shifts to Respondent to demonstrate that it does possess rights to or
legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat.
Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden, “then the burden
shifts to the respondent to show that it does have rights or legitimate
interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make a prima facie case that a respondent lacks rights and
legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to that respondent to show that it does have rights to or
legitimate interests in a domain name).
Complainant has established a prima facie case that Respondent lacks rights to and legitimate
interests in the <inadidas.com> domain name, while Respondent has
failed to respond to the Complaint filed in these proceedings. We are therefore free to conclude that Respondent
lacks rights to and legitimate interests in the disputed domain name. See 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.
See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). Nonetheless, we will analyze the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the contested <inadidas.com> domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <inadidas.com> domain name, and that Respondent is not authorized or licensed to use Complainant’s ADIDAS trademark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Adige Wang,” which does not resemble Respondent’s domain name. On this record, we must conclude that Respondent is not commonly known by the <inadidas.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We also observe that Complainant alleges, without objection
from Respondent, that Respondent’s <inadidas.com> domain name
resolves to a website that sells counterfeit and unauthorized versions of
Complainant’s products. Such a use of the subject domain name cannot
be a bona fide offering of goods or
services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the <inadidas.com>
domain name under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb.
Forum June 12, 2002) (finding that a respondent’s use of a disputed domain name
to solicit pharmaceutical orders without a license or authorization from a
complainant does not constitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i)); see
also Hewlett-Packard Co. v. Inversiones HP Milenium
Respondent’s use of the confusingly similar
domain name to sell counterfeit versions of Complainant’s products is not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
The Panel thus finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent registered and is using the <inadidas.com> domain name in bad faith under Policy ¶ 4(b)(iii). Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant’s products to Respondent’s website, where Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s ADIDAS mark. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring from a respondent to a complainant the <fossilwatch.com> domain name, where that respondent, a watch dealer, was not authorized to sell a complainant’s goods under its mark); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002): “Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”
Respondent’s
use of the disputed domain name to sell the unauthorized and counterfeit goods
of Complainant results in Respondent’s commercial gain, which is evidence of
Respondent’s bad faith registration and use of the contested domain name pursuant
to Policy ¶ 4(b)(iv).
See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb.
Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed
domain name to sell a complainant’s products without permission and misled Internet
users by implying that that respondent was affiliated with a complainant); see also Utensilerie Assoc. S.p.A. v. C
& M, D2003-0159 (WIPO Apr. 22, 2003):
The
contents of the website, offering …[a complainant’s ]…
products, together with the domain name may create the (incorrect) impression
that Respondent is either the exclusive distributor or a subsidiary of
Complainant, or at the very least that Complainant has approved its use of the
domain name.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <inadidas.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 27, 2010
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