WIPO Domain Name Decision: D2006-0475

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

adidas International Marketing BV and adidas-Salomon AG v. Sonia Eguia

Case No. D2006-0475

1. The Parties

The Complainants are adidas International Marketing BV, Amsterdam, Netherlands; and adidas-Salomon AG, Herzogenaurach, Germany, both represented by Klos Morel Vos & Schaap, Netherlands.

The Respondent is Sonia Eguia, Garland, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <adidastunit.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2006. On April 19, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name at issue. On April 19, 2006, Tucows 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, billing, and technical contact. 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 April 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2006.

The Center appointed Professor Keita Sato as the sole panelist in this matter on May 23, 2006. 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

In this proceeding, there are two Complainants, namely adidas-Salomon AG and adidas International Marketing BV. The first Complainant, adidas-Salomon AG, is a corporation organized under the laws of Germany, having its principal place of business in Germany. The company was named ADIDAS after its founder, Adi Dassler, started its business in 1949. Since then it does business almost all over the world in the field of sports and fitness products. The second Complainant, adidas International Marketing BV, is a corporation organized under the laws of the Netherlands, having its principal place of business in the Netherlands. Both companies are closely connected and affiliated, and belong to the same group of companies.

The first Complainant, adidas-Salomon AG, owns the registered trademark ADIDAS within several jurisdictions, such as international registration nr.354,439 for goods in class 28 (jouets et ballons), nr.358,770 for goods in class 25 (vetements de sport), nr.469,033 for goods in class 25 (vetements, bas, gants, chaussures, semelles, pointes et crampons pour chaussures de sport), nr.487,580 for goods in classes 18 (sacs et malles a vendre dans les magasins specializes dans le sport et dans les rayons speciaus de sport des grands magasins), 25 (vetements, etc.), and 28 (articles de sport, balles, chaussures de sport miniatures, balles miniatures), nr.498,358 for goods in class 3 (cleaning and polishing preparations etc.), nr.588,920 for goods in classes 9 (spectacles etc.) and 14 (jewellery, precious stones etc.), nr.667,288 for goods in class 9 (video and computer games), nr.787,174 for goods in class 32 (mineral and aerated waters and other non-alcoholic drinks etc.), and US trademark principal registration nr.72,318,280 for goods and services in class IC 025 (sport shoes, sportswear etc.), nr.73,335,636 for goods in class IC025 (sportswear, boots, shoes etc.), and European Community Trademark registration nr.2,288,355 for services in class 35 (retail service).

The second Complainant, adidas International Marketing BV, owns the registered trademark TUNIT within several jurisdictions, such as US trademark registration nr.78,654,250 for goods and services in classes IC25 (athletic footwear and parts thereof) and IC28 (goalkeepers’ gloves and parts thereof) since 2005, European trademark registration nr.4,488,607 for goods in classes 25 (footwear and component parts for footwear, clothing, headgear) and 28 (sports equipment and component parts for sports equipment), Benelux Trademark registration nr.767,299 for goods in classes 25 and 28. Also, the first Complainant owns the domain name <adidas.com> and operates its website under this domain name.

The Complainants became aware that the Respondent had registered the Domain Name at issue in November 2005. Since the Complainants have given no consent, license or other authorization to the Respondent for the registration of the Domain Name at issue, the Complainants have tried several times to contact the Respondent and sent a cease and desist letter to the Respondent by registered mail and by e-mail. However, the letter was returned to the sender as undeliverable because the Respondent’s address as provided in the WHOIS does not exist. The Respondent did not reply to this cease and desist letter. Following this, the Complainant brought this Complaint, seeking transfer of the Domain Name at issue to the Complainants.

5. Parties’ Contentions

A. Complainants

It is asserted that the Domain Name at issue is identical with the trademarks registered by the Complainants, since the Complainants have trademark rights in ADIDAS and TUNIT. The Complainants assert that the Respondent has no rights or legitimate interest in respect of the Domain Name at issue. The Complainants further assert that no evidence has been provided by the Respondent to counter their assumption that the Respondent does not use, or prepare to use, the Domain Name at issue in connection with a bona fide offering for goods or services and/or that the Respondent is not commonly known by the Domain Name at issue. The Complainants also assert that the registration of the Domain Name at issue was made in bad faith, because of the fame and distinctiveness of the ADIDAS trademark. According to previous decisions made under the Policy, one of the relevant standards in assessing bad faith is the actual or constructive knowledge of the Respondent. At the time of the registration of the Domain Name at issue, the Respondent already knew, or at least should have known, that the registration and use of the Domain Name at issue without the permission of the Complainants would constitute bad faith. In the Complaint, the Complainants further contend that the circumstance identified in paragraph 4(b)(iii) of the Policy, which pertains to bad faith domain name registration ‘primarily for the purpose of disrupting a business’, is applicable in this case. Bad faith is also indicated by the fact that the Respondent provided a non-existent address when registering the Domain Name at issue. In addition, the Complainants pointed out that the mere passive holding of a domain name cannot cure the bad faith of the registrant of that domain name.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Before starting its discussion, the Panel considers the acceptability of multiple complainants. Although the Policy does not expressly provide for “multiple complainants”, the Panel follows previous panel views and accepts the filing of the Complaint in this case by multiple complainants. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (related corporations have sufficient interest to join in a UDRP action); Hunter Douglas Industries, BV and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460 (a company has full rights to use and enforce the trademark registrations which are owned by other company due to a parent company-subsidiary relationship); Magna International Inc. and Donnelly Corporation v. Brian Evans, WIPO Case No. D2002-0898 (both companies had announced their agreement to merge). In this case, the Panel notes that the first and second Complainant belong to the same group of companies and are the respective owners of the trademarks ADIDAS and TUNIT, both of which appear in the Domain Name at issue. Therefore, the Panel accepts the filing of the Complaint by both Complainants and, hereafter, the Panel cites the two complainant companies jointly as “the Complainant”.

For the Complaint to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:

i) that the Domain Name at issue registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue; and

iii) that the Domain Name at issue has been registered and is being used in bad faith.

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

The Domain Name at issue combines two trademarks with the simple addition of the suffix “.com”. The addition of the suffix of the generic top-level domain (gTLD) “.com” is without legal significance from the standpoint of comparing the Domain Name at issue to ADIDAS and TUNIT, since use of a gTLD is required by domain name registrants. The Complainant has registered trademark rights in ADIDAS and TUNIT. As previously mentioned, ADIDAS is registered in many countries by the first Complainant, and it is well-known almost all over the world, and TUNIT is registered by the second Complainant. In this sense, the Domain Name at issue is not identical with the trademark registered by the Complainant, since the Complainant has not registered or used “ADIDASTUNIT” for any goods. However, the Panel finds that the Domain Name at issue is confusingly similar with the combined word trademarks registered by the Complainant.

Thus, the first element is made out.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name at issue. The Respondent does not give any evidence that it has registered trademark rights for ADIDAS or TUNIT in any jurisdictions. Since the trademark ADIDAS is famous world wide, the Respondent could not have any independent goodwill. The fact that both words ADIDAS and TUNIT are fanciful words also illustrates the unlikelihood of the Respondent having established its own independent goodwill. In addition, the Complainant stated that the Respondent is not authorized to use the trademarks or any variation thereof. Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. (Hunter Douglas Industries, BV and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460. See also, WIPO Overview of WIPO Panel views on Selected UDRP Questions, para 2.1). In this case, the Panel is satisfied that the Complainant has established a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name at issue, a showing which the Respondent has failed to rebut. Accordingly, the Panel finds that the second element of the Policy is made out.

C. Registered and Used in Bad Faith

This case is a case of “passive holding”, which means that the Respondent does not use the Domain Name at issue. The panel in the previous WIPO UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that passive holding could be evidence of bad faith if there also existed other factors indicating bad faith registration and use. In this case, the Respondent has failed to provide any evidence supporting a finding that it registered and is using the Domain Name at issue in good faith. It is more likely that, due to the fame of the trademarks ADIDAS and TUNIT and the fact that the Respondent has combined these two trademarks owned by the adidas group of companies in the Domain Name at issue, the Respondent was fully aware of the existence of the Complainant’s trademark rights and registered the Domain Name at issue in order to capitalize on the goodwill of the Complainant and its trademarks.

The Panel therefore finds that the Respondent registered and is using the Domain Name at issue in dispute in bad faith.

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, <adidastunit.com>, be transferred to the Complainant.

Keita Sato
Sole Panelist

Date: June 9, 2006