adidas AG and adidas America, Inc. v. Taranga Services Pty Ltd c/o Domain Admin
Claim Number: FA1006001329851
Complainant is adidas
AG and adidas
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <adidassuperstar.com>, registered with Moniker.com.
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 June 14, 2010.
On June 16, 2010, Moniker.com confirmed by e-mail to the National Arbitration Forum that the <adidassuperstar.com> domain name is registered with Moniker.com and that Respondent is the current registrant of the name. Moniker.com has verified that Respondent is bound by the Moniker.com 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@adidassuperstar.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 13, 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 (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:
Complainant adidas AG, a German joint stock company, and Complainant, adidas America, Inc., an American business corporation, will be referred to throughout this proceeding collectively as Complainant.
Complainant is an international manufacturer, distributor, and retailer of athletic and sports equipment, footwear, and apparel.
Complainant has used its ADIDAS mark since as early as 1952, and Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ADIDAS mark (including Reg. No. 883,592, registered January 6, 1970, renewed April 17, 1990).
Complainant has common law rights in the SUPERSTAR mark through its continuous use and the consequent development of secondary meaning in the mark.
Complainant began using the SUPERSTAR mark in 1969, in connection with its ADIDAS mark, to sell shoes, jackets, and pants.
Complainant currently offers for sale on its official website 67 products bearing the SUPERSTAR mark.
Complainant also includes the SUPERSTAR mark on its product hangtags, product packaging, and the like, which have helped to develop secondary meaning in the mark.
Complainant has not authorized or licensed Respondent to use its ADIDAS or SUPERSTAR marks in a domain name.
Respondent registered the <adidassuperstar.com> domain name on December 4, 2006.
Respondent’s domain name resolves to a website which features links to third-party sites, including websites of Complainant’s business competitors.
Respondent uses the disputed domain name to receive “click-through” fees.
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.
Respondent’s <adidassuperstar.com> domain name is confusingly similar to Complainant’s ADIDAS and SUPERSTAR marks.
Respondent does not have any rights to or legitimate interests in the domain name <adidassuperstar.com>.
Respondent registered and uses the <adidassuperstar.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.
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 acquired rights in the ADIDAS mark through its registrations of the mark with the USPTO which are sufficient for purposes of 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, complainant has met the
requirements of Policy ¶ 4(a)(i).
See also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Complainant also asserts common law rights in the SUPERSTAR mark through its continuous use and the consequent development of secondary meaning in the mark. Complainant has submitted sufficient evidence to establish common law rights in the SUPERSTAR mark under Policy ¶ 4(a)(i) dating from 1969, and Respondent does not contest this evidence. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a complainant need not own a trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); further see Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding that, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Respondent’s <adidassuperstar.com> domain name is confusingly similar to the combination of Complainant’s ADIDAS and SUPERSTAR marks. Respondent fully incorporates both of Complainant’s marks in the disputed domain name. Respondent then adds the generic top-level domain (“gTLD”) “.com” to Complainant’s marks. Combining two marks and merely adding a gTLD does not render Respondent’s disputed domain name distinct from the marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where a respondent combined a complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Bd. of Regents, The Univ. of Texas Sys. v. Stephanie Rosendahl, FA 1233394 (Nat. Arb. Forum Dec. 23, 2008) (finding confusing similarity where a respondent combined a complainant’s UNIVERSITY OF TEXAS and LONGHORNS marks to create the <universityoftexaslonghorns.com> domain name); further see 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 competing mark).
Therefore, the Panel finds that Respondent’s <adidassuperstar.com> domain name is confusingly similar to the combination of Complainant’s ADIDAS and SUPERSTAR marks pursuant to Policy ¶ 4(a)(i).
Complainant must first show that Respondent lacks rights to or legitimate interests in the <adidassuperstar.com> domain name pursuant to Policy ¶ 4(a)(ii). Once Complainant has made this prima facie case, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
We may, of course, interpret Respondent’s failure to submit
a Response to the Complaint filed in this proceeding as evidence that
Respondent lacks rights to or 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.
Nevertheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in any of the contested domain name which are cognizable under the policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that
Complainant has not authorized or licensed Respondent to use its ADIDAS or SUPERSTAR marks in a domain name. Moreover, the pertinent WHOIS information lists the registrant of the disputed domain name only as “Taranga Services Pty Ltd c/o Domain Admin”, which does not resemble the contested domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed 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 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 WHOIS information, as well as all other information in the record, gave no indication that that respondent was so known, and where a complainant had not authorized that 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 a respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that that respondent was commonly known by that domain name, including the WHOIS information, and where a complainant’s asserted that it did not authorize or license that respondent’s use of its mark).
We also note that Complainant alleges, without objection
from Respondent, that Respondent’s <adidassuperstar.com> domain
name resolves to a website that lists links to various third-party websites,
including websites that offer shoes and clothing in competition with
Complainant’s products. In addition, Complainant
claims that Respondent uses the disputed domain name to receive “click-through”
fees. Again Respondent does not contest
this assertion. Respondent’s use of its
domain name to profit from “click-through” fees in the manner alleged does not
constitute 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 Jerry Damson, Inc. v.
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is undisputed on this record that Respondent has been subject to numerous UDRP proceedings wherein the disputed domain names were ordered to be transferred from Respondent to the complainants in those cases. See, for example, BuySeasons, Inc. v. Taranga Servs. Pty Ltd c/o Domain Admin, FA 1312925 (Nat. Arb. Forum Apr. 20, 2010); see also Am. Airlines, Inc. v. Domain Admin a/k/a Taranga Servs. Pty Ltd, FA 1306277 (Nat. Arb. Forum Mar. 29, 2010). Therefore, Respondent has engaged in a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that a “Respondent has registered the disputed domain name, <aria.com>, to prevent [a] Complainant from registering it” and taking notice of another Policy proceeding against that respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(ii) where a respondent had been the subject of numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants).
Moreover, Respondent’s <adidassuperstar.com> domain diverts to Respondent’s website Internet users seeking Complainant’s products. The resolving website provides links to the sites of Complainant’s business competitors. This use of a domain name confusingly similar to Complainant’s marks to redirect Internet users to competing websites disrupts Complainant’s business, which evidences bad faith registration and use of the contested domain name by Respondent under Policy ¶ 4(b)(iii). See 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 of the domain by a respondent under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a disputed domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used it to operate a search engine with links to the websites of a complainant’s commercial competitors).
In addition, by using the disputed domain name to obtain click-through fees, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by knowingly creating a likelihood of confusion with Complainant’s marks as to the possible source or sponsorship of, or affiliation with or endorsement of, Respondent’s website. Because Respondent’s domain name is confusingly similar to Complainant’s ADIDAS and SUPERSTAR marks, an Internet user could misinterpret Complainant’s connection with Respondent’s website. Consequently, this is further evidence of Respondent’s bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See 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)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products of a complainant and those of that complainant’s competitors).
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <adidassuperstar.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 15, 2010
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