WIPO Domain Name Decision: D2007-0032

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adidas AG v. Zhifang Wu

Case No. D2007-0032

1. The Parties

The Complainant is Adidas AG, Herzogenaurach, Germany, represented by Klos Morel Vos & Schaap, Netherlands.

The Respondent is Zhifang Wu, Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <adidas.mobi> is registered with HiChina Web Solutions Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2007. On January 11, 2007, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On January 12, 2007, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a submission on Language of Proceeding on January 25, 2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on January 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2007. The Response was filed with the Center on February 16, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on March 7, 2007. 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 Company was founded on August 18, 1949, and was named after its founder Adi Dassler. Since then, the Complainant has grown into one of the world’s leading sports and fitness products companies. Its products are sold in over 160 countries. The Complainant is the owner of the ADIDAS trade mark and company name. The ADIDAS trade mark has been registered on a worldwide basis in relation to goods such as athletic footwear, sports apparel and sports equipment like bags and balls. On September 25, 1995, the Complainant has registered the domain name <adidas.com> under which the Complainant operates its official website.

Recently, the Complainant has become aware that the Respondent had registered the disputed domain name <adidas.mobi>. The Complainant has contacted the Respondent via email and obtained the response from the Respondent that he has registered the disputed domain name for sale.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name <adidas.mobi> is identical to the Complainant’s trade mark ADIDAS. The addition of the suffix ‘.mobi’ does not prevent a domain name from being identical or confusingly similar and is not sufficient to render a domain name distinctive from the trade marks of the Complainant. The Complainant also invokes the principal of ‘initial interest confusion’ which is the fact that when the Internet users finally discovers that the domain name or website is not operated by ADIDAS, this cannot cure the initial interest confusion experienced by the average Internet user when viewing, using or typing in the Respondent’s domain name. The Complainant argues that the ‘initial interest confusion’ has been applied in numerous UDRP cases and it is also acknowledged in the Overview of WIPO Panel Views on Selected UDRP Questions.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <adidas.mobi>. The Complainant argues that from the email correspondences with the Respondent, it is evident that the Respondent has no other intention than to hijack the domain name <adidas.mobi> and to sell it for a ‘good price’. Thus, the current website onto which the disputed domain name <adidas.mobi> resolves is in the opinion of the Complainant nothing but a mere cover up of the true intent of the Respondent which is to trade off the goodwill and fame of the Complainant’s trade mark ADIDAS and to extort from the Complainant a considerable amount of money through selling the disputed domain name. The Complainant further contends that the Respondent has no relationship with the Complainant and the trade mark ADIDAS is not one that the Respondent would legitimately choose in the context of provision of goods or services via the Internet unless he is seeking to create an impression of an association with the Complainant. Finally, the Complainant contends that the Respondent has not provided any evidence to prove that he does have rights or legitimate interest in the disputed domain name.

Registered and Used in Bad Faith

The Complainant contends that the disputed domain name is registered and is being used in bad faith. First, the email correspondence from the Respondent provides clear evidence of bad faith as the disputed domain name has been registered by the Respondent primarily for the purpose of selling the domain name to the owner of the ADIDAS trade mark for valuable consideration in excess of out of pocket costs directly related to the domain name. Second, the Complainant contends that as a result of the fame and distinctiveness of the ADIDAS trade mark, the registration of the disputed domain name <adidas.mobi> qualifies as being made in bad faith per se. The Complainant contends that the ADIDAS trade mark is a fancy mark without any meaning and the use do the word ADIDAS can only refer to the trade mark and company name of the Complainant. The Complainant cites the UDRP cases of Victoria’s Secret et al v. Powerbiz, NAF No.FA0101000096497 and Geoffrey, Inc. v. Peter Iaonnou, NAF No. FA0111000102481 in support of its contention. Third, the Complainant contends that at the time of registration the Respondent already knew, or at least should have known, that the registration of the disputed domain name without permission of the Complainant would constitute bad faith. The Respondent’s requisite knowledge can be established with reference to his email correspondence. Beside the email, the Complainant also believes that actual or constructive knowledge of the Complainant’s trade mark can be inferred from (a) the world-wide well-known use and reputation of the ADIDAS brand and products; (b) the fact that a simple check of trade mark records of trade mark offices in the United States of America, the European Union, etc. would have made the Complainant’s trade mark known to the Respondent; (c) the fact that the Complainant owns several domain names incorporating the ADIDAS trade marks and have been providing good and services on its official website “www.adidas.com” since 1995; and (d) the fact that ADIDAS is one of the Official Beijing 2008 Partners sponsoring the 2008 Olympics in Beijing has also led to significant exposure and publicity of the Complainant’s trade mark in China. Finally, the Complainant contends that as a result of the well-known use and reputation of the Complainant’s trade mark ADIDAS and the absence of any legitimate prior use by the Respondent, the primary purpose of the Respondent registering the domain name is to disrupt the business of the Complainant. The Complainant cites UDRP case BioCare Limited v. UK Scientific.com Ltd, WIPO Case No. D2002-0345 in support of its argument.

B. Respondent

The Respondent’s response is as follows:

1. The Respondent has registered the <adidas.mobi> domain name for sale but he has done so only after the priority or sunrise period for registration by trade mark owners of domain names under the top level domain ‘.mobi’. Thus, the Respondent contends that he is the legal owner of the disputed domain name. The Respondent argues that he is asking for a ‘favourable price’ for the transfer of the domain name and is not in any way exhorting money from the Complainant.

2. The Respondent contends that although the Complainant is the trade mark owner of ADIDAS, this does not mean that the Complainant is also the rightful owner of all the domain names incorporating the ADIDAS mark in the various top level or country level domains.

3. The Respondent contends that the Complainant should take the responsibility of securing the different domain names incorporating the ADIDAS mark and not attempt to seize them from others like the Respondent who has legitimately registered the domain name.

4. The Respondent laments that this is his first experience registering a domain name and there are many rules that he is not familiar with. In fact, he contends that if he had known that the registration will be so troublesome, he would not have registered the disputed domain name in the first place as there are many other domain names that he can register which in his opinion can fetch him very good prices.

6. Discussion and Findings

6.1 Language of the Proceedings

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant has filed its Complaint in English. On January 23, 2007, the Center notified the Complainant that since the language of the registration agreement for the disputed domain name is in Chinese, paragraph 11 of the Rules stipulates that the language of the administrative proceedings shall accordingly be Chinese. The Complainant has submitted a Request for English to be the language of the administrative proceedings and has provided the following reasons in support of its request:

a. There is substantial evidence in this case which shows that the Respondent has excellent knowledge of and is proficient in the English language. From all the email correspondences with the Respondent leading up to this proceeding, the Complainant concludes that the Respondent is able to communicate effectively in English.

b. UDRP case law has held that records of prior communications should be taken into account as a reasonable basis for determining the language of the administrative proceeding.

c. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors. See Siemens Aktiengesellschaft v. bak jogsub, WIPO Case No. D2006-0972.

d. The Complainant emphasizes that it is not able to communicate effectively in Chinese and highlights the expenses to be incurred and the possibilities of delay in the proceedings if translations are required and given that the Respondent is able to communicate effectively in English, the proceeding should be conducted in English.

e. The Complainant contends that the Respondent’s request for the language of the proceeding to be Chinese is nothing but tactics to incur more costs, raise barriers and to make it more difficult for the Complainant to protect its trade marks. Furthermore, it is important to note that the Respondent only requests for Chinese to be the language of the proceeding after Notification of the Proceedings by the Center. All prior communications with the Complainant were in English.

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that sufficient evidence has been adduced by the Complainant to show that the Respondent is proficient in the English language and is able to communicate effectively in English. The choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision of the Panel will be delivered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the 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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark ADIDAS in many countries throughout the world.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s sports and fitness products.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trade mark ADIDAS and (b) the top level domain suffix ‘.mobi’. The word “adidas” is the dominant and the distinctive element of the Complainant’s mark and it has been reproduced in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that the addition of the suffix ‘.mobi’ does not prevent a domain name from being identical or confusingly similar and is not sufficient to render a domain name distinctive from the trade marks of the Complainant.

Bearing in mind the following factors, in particular (a) the widespread reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s mark ADIDAS; (c) the dominant component of the disputed domain name; and (d) the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name <adidas.mobi> is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “adidas” in its business operations. In fact, from the screen shots taken of the current website of the Respondent onto which the disputed domain name resolves, the Panel is of the opinion that it is a not genuine website providing genuine goods and services but a mere temporary website on display;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;

3. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;

4. The Complainant and its mark ADIDAS enjoys a worldwide reputation with regard to sporting goods and fitness products. Consequently, in the absence of contrary evidence from the Respondent, the ADIDAS mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent in his Response has not provided convincing evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or 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 the 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 on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.

The Panel concludes based on the case file that the circumstances referred to in paragraph 4(b)(i) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

First, the Complainant has adduced evidence in the form of email correspondences to show that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant or to a competitor of that the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name within paragraph 4(b)(i) of the Policy. In response, the Respondent argues that as he has registered the disputed domain name after the priority or sunrise period for registration by trade mark owner of domain names in the top level ‘.mobi’ domain, he is the legal and rightful owner of the domain name. Consequently, the Respondent is of the view that he has the right to transfer the domain name at a “favourable price” to a willing buyer including the Complainant. This is misconceived. Under the “.mobi” Top Level Domain, registrants agree to be bound by the UDRP for post-registration disputes concerning trade mark rights. The registration of ‘.mobi’ domain names after the priority or sunrise period is still subject to challenges by legitimate trade mark owners like the Complainant. After considering the evidence adduced before the Panel, it is evident that the only reasonable conclusion that the Panel can arrive at is that the Respondent did not intend to use the registered domain name for the purpose of a bona fide offering of goods and services but instead, there were intentions to profit from the transfer of the disputed domain name to either the Complainant or to its competitors. Consequently, the Panel accepts the Complainant’s submission that the Respondent has registered and used the disputed domain name in bad faith.

Second, the circumstances referred to in paragraph 4(b) of the Policy are not exhaustive and other factors can also be considered in the totality of evidence to find bad faith within paragraph 4(b) of the Policy. In the present case, the Panel finds that the Complainant and its mark ADIDAS enjoy a worldwide reputation with regard to sporting goods and fitness products. Therefore, the Panel finds that it is unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name. In fact, the Respondent did not deny that he had knowledge of the Complainant’s trade mark at the time of the registration of the disputed domain name. This is evident from the contents of the email correspondences between the parties. This finding coupled with the fact that the Respondent has not adduced convincing evidence to show that he has rights or legitimate interests in the disputed domain name lead the Panel to conclude that the Respondent has registered the disputed domain name for less than honorable intentions. In the absence of strong overriding evidence and rebuttal from the Respondent, the Panel finds that the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and usage of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <adidas.mobi>, be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: March 21, 2007