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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Adidas AG and Adidas (Ireland) Limited v. Gabor Varga and Jozsef Petho

Case No. DIE2006-0004

 

1. The Parties

The Complainants are Adidas AG, of Herzogenaurach, Germany and Adidas (Ireland) Limited of Dublin, Republic of Ireland, represented by McCann FitzGerald Solicitors, Ireland.

The Registrants are Gabor Varga and Jozsef Petho, of Dublin, Republic of Ireland, represented by Merrion Legal.

 

2. The Domain Name and Registrar

The disputed domain name <adidas.ie> is registered with IE Domain Registry Limited.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2006. On October 3, 2006, the Center transmitted by email to IE Domain Registry Limited (“IEDR”) a request for registrar verification in connection with the domain name at issue. On October 4, 2006, IEDR transmitted by email to the Center its verification response confirming that the Registrants were listed as the registrants and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Arbitration and Mediation Center Supplemental Rules for .IE Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Registrants of the Complaint, and the proceedings commenced on October 9, 2006. In accordance with the Rules, paragraph 5.1, the due date for Response was November 6, 2006. A request for an extension in the due date was received by the Center from the Registrants on November 6, 2006. Taking into account factors including the comments of the Complainants and the Registrants’ stated reasons for the request, the due date for the submission of a Response was subsequently extended by the Center to November 10, 2006. The Registrants submitted a Response to the Center on November 10, 2006. On the same date the Registrants submitted a separate “Short Supplemental Response”. The Panel has treated this as forming part of the Response.

The Complainants submitted an additional submission to the Center on December 1, 2006.

The Center appointed Adam Taylor as the sole panelist in this matter on December 7, 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.

On December 19, 2006, at the request of the Panel, the Center issued a notice to the parties as follows: “In accordance with paragraphs 9.1 and 11 of the Dispute Resolution Rules of Procedure for .IE Domain Name Registrations, the Panel directs that the Registrants have until Friday, December 22, 2006 to file any additional submissions that they wish to make in response to the Complainants’ Supplemental Submission of 1 December 2006. Such additional submission must address only the matters raised in the Complainants’ Supplemental Submission.” No additional submission was received from the Registrants.

 

4. Preliminary Issue

The Complainant filed an additional unsolicited submission on December 1, 2006.

While the Rules do say that the Panel may request further submissions (paragraph 11), they make no provision for a party to file an additional submission without leave of the Panel. However, the principles which the Panel should apply in exercising such discretion have been considered in many cases under the Uniform Dispute Resolution Policy (“UDRP”). See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. It is appropriate for the Panel to have regard to principles established under the UDRP where they are of assistance in applying comparable provisions under the Policy – see further under “Discussion and Findings” below.

The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

Here, the purpose of the additional submission was to deal with a change of use of the disputed domain name occurring after the Complainants filed their Complaint and the Complainants did set out that reason in an email separately from the material itself. The submission does not prejudice the Registrants, which have in any case been given an opportunity to respond thereto. The Panel therefore exercises its discretion to admit the additional submission.

 

5. Factual Background

The Complainants are part of a group which operates a worldwide business in the field of sports related equipment and clothing.

The first Complainant owns the following registered trade marks.

Type	Number	Date	Classes	Mark
CTM	2288355	June 29, 2001	35 Retail services in the field of footwear, clothing and sporting articles	adidas (word)
Ireland	64598	August 1, 1962	25 Sporting footwear	ADIDAS (word)
Ireland	74673	January 30, 1969	25 A garment for sportsmen	ADIDAS (word)
Ireland	74674	January 30, 1969	18 Bags included in Class 18	ADIDAS (word)
Ireland	91728	January 18, 1977	28 Tennis rackets, ice and rollerskates, ski equipment and playing balls	ADIDAS (word)
Ireland	110731	January 20, 1984	18 Bags, trunks and suitcases	ADIDAS (word)
Ireland	110733	January 20, 1984	28 Sports equipment included in Class 28; toys and games	ADIDAS (word)
Ireland	110732	January 20, 1984	25 Articles of clothing included in Class 25; footwear, insoles, spikes and cleats for sportshoes	ADIDAS (word)
Ireland	115292	January 28, 1985	3 All goods in Class 3	adidas (stylized word)
Ireland	787174	July 17, 2002	32 Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.	ADIDAS (word)

The second Complainant is the licensee of the Irish trade marks listed above.

The Registrants registered “adidas.ie” as a business name with the Irish Companies Registration Office on January 10, 2006.

The Registrants registered the disputed domain name on January 12, 2006.

As of September 13, 2006, the disputed domain name resolved to a directory website at “www.eubrowser.com” comprising affiliate search / shopping links relating to general categories of goods and services.

The Complainants’ solicitors sent a cease and desist letter to the Registrants on July 17, 2006, and a chasing letter on September 7, 2006. The Registrants did not reply to these letters.

As of November 11, 2006, there was a website at the disputed domain name branded “A D I D A S” followed by a “Web Search” and a search box. The metatitle visible at the top of the browser stated “Advanced Detailed Internet Directory And Search – ADIDAS.IE”. A disclaimer at the top of the page stated: “This site has no connection with adidas AG.” The page invited users to “[h]elp build the largest human-edited directory on the web” and linked to the “Open Directory Project”.

 

6. Parties’ Contentions

A. Complainants

Identical or Misleadingly Similar

The “ADIDAS” trade mark is a well-known mark for the purposes of the Paris Convention.

The Complainants have rights under Irish common law based on extensive use in Ireland since the 1960’s.

The Complainants’ business was founded by Mr. Adi Dassler who began making athletic shoes in his home town of Herzogenaurach, Germany in 1920. In 1949, he founded the predecessor company to the first Complainant, combining the words of his name to make the “adidas” name.

In 1967, Adi Dassler extended his range of products to include sports clothing, and, in 1974, his business began to manufacture and sell sporting equipment under the adidas brand, such as bags, balls and tennis rackets. The Complainants’ strong reputation in manufacturing high quality clothing products is demonstrated by the extent to which its clothing has been used by athletes over the years at prominent sporting events.

The Complainants’ group had a worldwide turnover for the year ended December 31, 2004 of 5,174Euros million in relation to the “ADIDAS” business.

In Ireland the trade mark “ADIDAS” is now famous in the field of sports related equipment, clothing and footwear, bags and bodycare products and is associated exclusively with the Complainants’. Its products have been sold continuously in the Republic of Ireland at least since the mid to late 1960s. The second Complainant was incorporated in Ireland in 1988, as exclusive distributor of the Complainants’ footwear and clothing products in the Republic of Ireland. Since 1993, Adidas (UK) Limited has been responsible for distributing adidas products in the Republic of Ireland although the second Complainant provides sales and marketing services.

The Complainants distribute to approximately 155 retailers in the Republic of Ireland. Net sales of the Complainant’s products in the Republic of Ireland in 2004 were 32,216,000 Euros.

The Complainants submit that they have invested heavily over the years in the marketing and promotion of the “ADIDAS” mark. In the Republic of Ireland spending on advertising in 2004 was 693,000 Euros.

The Complainants sponsor international sportsmen and women as well as international sporting events such as the football World Cup and the Olympics broadcast in the Republic of Ireland. The Complainants sponsor many local events and teams in the Republic of Ireland including the Women’s Mini Marathon which takes place annually in Dublin.

The Complainants’ substantial reputation and goodwill under the “ADIDAS” trade mark. is protected under Irish common law by the tort of passing off.

In addition, the trade mark has become a distinctive identifier associated exclusively with the Complainants and their goods. Other than the addition of the “.ie” suffix, the domain name “adidas.ie” is identical to the Complainants’ trade mark, “adidas”. The “.ie” suffix should not be taken into account in assessing whether the domain name is identical to the Protected Identifier.

Rights or Legitimate Interests

The Complainants state that they are not aware that the Registrants are using the disputed domain name in connection with a bona fide offering of goods or services nor is there any evidence of demonstrable preparations to do so.

There was no apparent use of the word “adidas” on the website at the disputed domain name with affiliate search / shopping links.

The Complainants further state that they are not aware of any business operated by the Registrants under the name “adidas.ie.” In view of the Complainants’ registered and unregistered rights in the trade mark “ADIDAS” it is impossible to conceive of any plausible actual or contemplated active use by the Registrants that would not be illegitimate in law, as being a passing off or an infringement of trade mark.

The domain name does not correspond to the personal name of either of the Registrants, or to the Complainants’ knowledge, a pseudonym for either Registrant.

The Complaints contend that the Registrants’ business name registration does not create legitimate rights as it was made purely for the purposes of authenticating the Registrants’ claim for the disputed domain name in accordance with the IEDR Registration Policy. Such business name registration forms part of a pattern of conduct by the Registrants of registering well known trade marks or variants thereof as business names and subsequently registering .ie domain names for such business names.

Under the Registration of Business Names Act 1963, it is not possible, the Complainants submit, to object to the registration of a business name on the basis of conflicting trade mark rights.

To the extent that the Registrants may argue that they are operating a business under the name “adidas.ie” they are diverting visitors from <adidas.ie> to an alternative web site, this is not a bona fide offering of services or operation of a business, given that it infringes the Complainants’ trade marks and that the Registrants must be aware of the Complainants’ rights in such trade mark. The Complainants refer to Madonna Ciccone v. Dan Pirisi (WIPO Case No. D2000-0847) which stated that use of a domain name which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services. Per Palm Inc v. South China House of Technology Consultants Ltd (WIPO Case No. D2000-1492), the words “bona fide” should be read into paragraph 3.1.2 of the Policy.

Registered or Used in Bad Faith

The Complainants contend that the Registrants are engaging in a pattern of manipulating the ‘registered business name’ category of .ie domain names and registering well-known domain names with the purpose of re-directing internet visitors to such sites (who are visiting such websites in the belief that they are associated with the brand owner in question) to a website at “www.eubrowser.com” or a variation thereof. These include the following:

Domain Name	Registered Business Name
<nike.ie>	nike.ie
<ipod.ie>	ipod.ie
<googel.ie>	Googel Surprise from Alexia
<gogle.ie>	Gogle Ipphone Services
<googl.ie>	Googl Wikipedia Value
<googol.ie>	Googol Workstation beta

Further, the Complainants contend that the disputed domain name has been registered either in an attempt to profit or make a commercial gain in some way from an association with the Complainants’ trade mark (perhaps in the form of advertising revenue) or in the hope of extracting some payment for the domain name in excess of the Registrants’ out of pocket expenses.

A letter from IEDR indicating its belief that the Registrants have been manipulating the criteria for .ie domain registrations is further evidence of bad faith.

The domain name is the Complainants submit being used in a way that is likely to dilute the reputation of the Complainants’ trade mark. Internet users attempting to visit the website at the disputed domain name will either question whether the Complainants are the sole users and controllers of the Complainant’s trade mark, thus diluting its reputation and exclusive association with the Complainants, or may believe that the website in question is associated with the Complainants or endorsed by them in some way, diluting the reputation of the trade mark in that manner.

The Registrants were aware of the Complainants’ rights in the “ADIDAS” trade mark, at the latest after receipt of a cease and desist letter on July 17, 2006. The fact that the Complainants’ trade mark is extremely well known precludes the possibility that the registration of the domain name is in some way honest, mistaken or non-exploitative.

In E. & J. Gallo Winery v. Oak Investment Group (WIPO Case No. D2000-1213) the WIPO Panel found that bad faith could be inferred if the Registrant “knew or should have known” of the Complainant’s mark. The extent of the reputation of the Complainants’ trade mark has been accepted in previous WIPO decisions, e.g., adidas - Salomon AG v. Vincent Stipo (WIPO Case No. D2001–0372).

The Complainants further contend that in the unlikely event that the Registrants were not aware of the Complainants’ rights in its trade mark when registering the domain name, they have since been advised of such rights by correspondence, to which the Registrants have failed to respond.

B. Registrants

Identical or Misleadingly Similar

The Registrants contend that the domain name is not identical or confusingly similar to a trademark or service marks in which the Complainants allegedly have rights.

The Registrants challenge the trade or service mark rights asserted by the Complainants.

The Registrants further contend that the Complainants’ trade marks do not have the reputation and use alleged in the Republic of Ireland and use of the Registrants’ mark would not take unfair advantage of, or be detrimental to, the character or alleged distinctive character or any alleged reputation of the Complainants’ marks.

None of the trade marks relied upon by the Complainants relate to the internet or activity carried out via the internet. The activities of the Complainants are predominantly retail based. If the Complainants were concerned to protect their names and brands they should have registered marks in the relevant classes

The Complainants’ documents do not demonstrate an identical or similar mark for identical goods and/or services nor an identical or similar mark for similar goods and/or services. Therefore the Complaint should be refused.

The Registrants submit that Irish trade mark 115292 and possibly CTM 2288355 are designs and therefore prima facie not relevant.

The Complainants cannot claim a monopoly on word of common origin. The Complainants disclosed that their mark originates in part from the name “DASSLER” which is reasonably common in parts of Europe including as part of the name used by on of the Complainant’s competitors: “PUMA AG Rudolf Dassler Sport”.

Eight of the trade marks relate to particular goods, mainly sporting. None relate to services, nor indeed to Internet or search engine activities and services. Therefore none of the marks are protected identifiers for the purposes of a complaint against the Registrants in relation to the disputed domain and their Internet search engine website.

Other companies have sought to register trade marks for online sale/distribution/marketing of their products and services whereas the Complainants have deliberately avoided doing so.

The Registrants further contend that the “.ie” suffix needs to be considered in comparing domain name and trade mark. Recognition also needs to be given to the Registrants’ own mark and the words “Advanced Detailed Internet Directory And Search”.

Rights or Legitimate Interests

The Registrants are the proprietors of the mark “ADIDASDOTIE/ADIDAS.IE” (“the Registrants’ Mark”) and since the launch of products and/or services in Ireland bearing the Registrants’ Mark, registration of the domain and registered business name and the use of the Registrants’ Mark on the website at the disputed domain name, the Registrants have acquired and are acquiring a reputation under the Registrants’ Mark, in particular in relation to Internet and Internet search services.

Before the Registrants received any notice of the dispute, they contend, there is evidence of the Registrants use of, or demonstrable preparations to use, the Registrants’ Mark and domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

An Alexa.com search report shows that the three month average of hits to the Registrants’ site is approximately 1.5m. This is not insignificant and demonstrates legitimate and bona fide activity. The same search reveals that the Registrants website has more hits or traffic than the Complainants’ UK site. The Registrants site has a higher Alexa traffic rank than other Irish sites such as the Irish Tourist Board site at “travel.ie”.

The Registrants submit that they are legitimate business people and fully intent on developing and expanding their interests. They intend to expand and to move their business to the Guinness Enterprise Centre in Dublin.

The Registrants deny that the application for registration of the Registrants’ Mark is made in bad faith or that registration of the said Mark would offend against the Irish Trade Marks Act, 1996 or the Policy, the Rules or the Supplemental Rules. The Registrants are entitled to registration and use of the Registrants’ Mark under Section 12 of the Trade Marks Act, 1996 on the grounds of honest concurrent user as none of the Complainants earlier marks relate to or protect them in relation to the internet.

The Registrants contend that prior to and since registering the disputed domain name and registered business name, the Registrants have been researching and developing their online model and have invested in software and a website. The first beta version of the website is now visible online. Immediately following registration the domain pointed to an intermediary home page. This is common practice in relation to the Internet. It is only after this work and preparation had been undertaken that the Registrants received a communication from the Complainants displaying an interest in the disputed domain name for the first time. In the short time available since being instructed it has not been possible to outline fully the time, expense and effort expended by the Registrants.

The Complainants have a legitimate search engine website located at the disputed domain name. This has no connection with and does not and will not compete with the Complainants products. It is currently provided on a free and non commercial basis. However, the Registrants have spent considerable time and effort researching, developing and drafting models for the roll out of a full service offering. The name chosen for the Registrants’ Internet search model is an abbreviation of the term “Advanced Detailed Internet Directory and Search”. Abbreviation in certain circumstances is inevitable given the nature of the internet. The website at the disputed domain name disclaims any association with the Complainants.

The Registrants deny that it is impossible to conceive of any plausible actual or contemplated active use by the Registrants of the Complainants’ trade mark that would not be illegitimate. As an example a legitimate store or reseller would it is submitted be entitled to use the word “Adidas” as would someone providing second hand legitimate products of the Complainants.

The Registrants deny that the disputed domain name is not the personal name or a pseudonym of the Registrants name and refer to the site model pseudonym “A.D.I.D.A.S” for Advanced Detailed Internet Directory And Search. The Registrants (as individuals, business, or other organization) have been or is commonly known by the domain name in issue, even if they have has acquired no trademark or service mark rights.

The Registrants’ registered business name, they submit, constitutes rights or legitimate interests in relation to the disputed domain. These current proceedings are premature until the Irish courts adjudicate on the Registrants’ legitimate registered business name, which was the basis upon which the domain was lawfully registered. Any attack on a registered business name may only be brought in Irish courts and under Irish law. It is telling that the Complainants have not done so. If the Complainants were serious about the accusations now made, and not seeking to merely remedy their own neglect over a long period of years by means of reverse domain name hijacking, that they have sought to enforce their rights in the strongest and most effective way possible.

The Registrants deny that there is some attempted ploy to register the domain. The suspicions or otherwise or familiarity or otherwise of the Complainants with the Registrants and their business and other activities is irrelevant for present purposes.

The Registrants deny that they are diverting visitors from the disputed domain name to another website which is not a bona fide offering of services or operation of a business.

The fact that the disputed domain name has been registered also constitutes rights or legitimate interests. IEDR operates a policy whereby applicants must show an entitlement to a domain name. Here the Registrants did so and the registration was permitted.

The Complainants appear to have two company registrations in the Republic of Ireland but no business name registration.

The Registrants are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

Registered or Used in Bad Faith

The Registrants deny that the domain name has been registered and is being used in bad faith.

The Registrants contend that the domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants, as the alleged owner of the trademark or service mark, or to a competitor of the Complainants, for valuable consideration in excess of the Registrants’ out-of-pocket costs directly related to the domain name. No such request or demand has ever been made.

The Registrants deny that the registration or use of the Registrants’ Mark, of the disputed domain name or of their registered business name offend against the Irish Trade Marks Act 1996 or any laws protecting unregistered trade marks or any other applicable Irish or EU laws.

To the extent to which the Complainants feel that there is an infringement of their trade marks, it is open to them to make such an application before the Irish courts.

The Registrants submit that the fields of activity of both the Registrants and the Complainants are totally different and do not cross over. There exists no likelihood of confusion on the part of the public which includes the likelihood of association with the Complainants’ earlier marks. The public are not and would not in any way be confused, deceived or call to mind an association.

The Registrants contend that the Complainants’ neglect in not seeking to register the current domain in dispute should not prejudice the Registrants who have been and are entitled to register same under the current restrictive domain registration regime operated in Ireland.

The disputed domain name was not registered to prevent the Complainants from reflecting the mark in a corresponding domain name and, in connection therewith, the Registrants have not engaged in a pattern of such conduct. The Complainants have a number of pre-registered domain names and websites and are therefore well facilitated in terms of reflecting and utilizing their trade marks and protected identifiers. The Complainants are in no way prevented or hindered.

As of November 5, 2006, the domain name <adidas.net> was available but it appears that this was not of interest to the Complainants.

The Registrants have not and by definition cannot interfere with the Complainants business given the differing activities and rights of the respective parties. No dilution has occurred, nor has any misleading information been provided.

The Complainants and the Registrants are not competitors and the domain name was not registered by the Registrants primarily or at all to disrupt the Complainants business. Clearly there has been no adverse impact upon the Complainants or their business and no evidence of lost business or confusion has been asserted or proven.

The domain name was not registered by the Registrants, they contend, in an intentional attempt to attract for commercial gain, internet users to the Registrants’ website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark or marks as to the source, sponsorship, affiliation, or endorsement of the Registrants’ website or location or of a product or service on the Registrants’ website or location. No such evidence has been submitted by the Complainants.

The Registrant’s contend that the Complainants are seeking to create monopoly. There can be instances where third parties can legitimately use the Complainants’ marks.

The Complainants are not only are seeking to obtain protection where they are not entitled by ignoring the Irish trade mark system; they are also seeking to extend the protection of their existing marks to areas where such protection does not traditionally or naturally extend. Such blurring, extension and dilution should not be permitted. The Irish courts are the appropriate forum for such matters. The Complainants, a large multi-national organization with substantial resources, have avoided asserting such claims in the Irish courts as regards these non identical, non similar and non competing activities of the respective parties.

A cursory internet examination search as of November 5, 2006, indicates that there are a number of entities who use the name “Adidas” who are not connected with the Complainants. Some of these appear to have some connection with the Complainants goods such as the Registrants and the popular music band KORN. The Registrants have not had the time or opportunity to investigate any ‘sucks’ sites.

The Registrants deny that they have manipulated the IEDR system and that they are seeking to create confusion. In no Internet searches undertaken have the Registrants website come up with the most hits. The Complainants do not refer to actual confusion.

The Registrants deny the Complainant’s accusations concerning a pattern of manipulating the .ie domain registration system. The Registrants request further time to deny each accusation in particular and furnish appropriate evidence. It is surprising that a letter would emanate from the IEDR as the registration of the disputed domain name was passed and approved. The Registrants are particularly aggrieved at the veiled accusation that they have in some way manipulated the system.

The Registrants state they are developing a number of different online models and have plans for each of the individual domains belonging to “FirstPage.ie Press”. Consequently there are a number of registered business names.

The Registrants are not professionals and have has some difficulty in dealing with the correspondence and demands to date in correspondence. This is the reason for any delay in replying to the issues addressed in the Complaint. The Registrants’ lawyers were only instructed recently and had not had the opportunity to answer all issues in detail.

The Registrants rely on Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club WIPO Case No. D2000-1532.

Reverse Domain Name Hijacking

The Registrants claim that this is a case of reverse domain name hijacking. The Complainants, they contend, could have registered the domain in question, but for their own reasons decided to ignore the Republic of Ireland while continuing to register other domain names, many of which are EU country domain extensions. All commercial organizations, particularly those with a website presence, must accept or be taken to accept that the domain name registration system operates in on a first come first served basis. The Registrants rely on an article from Irish Technological news site Siliconrepublic.com which explains why Irish persons prefer to buy “dot com” instead of “dot ie” and so a decision by the Complainants not to acquire the disputed domain name was a strongly commercial one.

Online commerce and trade mark protection for online activities have not heretofore formed part of the Complainants’ business model. If the Complainants were trading or intending to trade online in the Republic of Ireland they have had approximately 10 if not 15 years within which to apply to register the domain name.

The claim of reverse domain name hijacking is, the Registrants submit, even more justified given that it appears that the Complainants did not actively or proactively discover the registration and hitherto were in no way interested in same, until the receipt of the letter from the IEDR.

C. Complainants (additional submission)

The Complainant’s submit that the Registrants’ claim in the Response that the disputed domain name derived from an abbreviation of the title used on the new website is far fetched.

The Registrants did not register ““Advanced Detailed Internet Directory And Search” as a business name.

The title on the website was created to seek to legitimize the Registrants’ use of “Adidas”.

To the extent that the Registrants were aware of the Complainants’ trade mark, use of the title of the website cannot create legitimate interests as such use would infringe the Complainants’ trade marks and constitute passing off.

It is irrelevant that the Complainants have not established trade mark use in relation to Internet search engines or similar services as initial interest confusion can arise in any case. In any case, due to the fame of the Complainants’ mark, confusion can arise where the trade mark is used for goods or services dissimilar to those of the Complainants.

The disclaimer on the new website is insufficient to negate initial interest confusion.

It is highly unlikely that the potential titles for the Registrants’ other models coincidentally correspond to famous marks.

The change of use after filing of the Complaint is itself further evidence of bad faith.

7. Discussion and Findings

Paragraph 1.4 of the Policy states: “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 are met”.

A. Identical or Misleadingly Similar

The first condition in paragraph 1.1 of the Policy is that the Domain Name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.

Under paragraph 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.

The Complainants own a number of registered trade marks for the word “ADIDAS” which are protected in the island of Ireland.

The Registrants say that the Complainants cannot rely on their registered trade marks because they do not relate to the Internet or activities carried out via the Internet. The Policy does not however qualify the definition of “protected identifier” in this way. Indeed paragraph 1.1 of the “Overview of WIPO Panel Views on Selected UDRP Questions” on the WIPO website at “http://arbiter.wipo.int/domains/search/overview” (“the WIPO Overview”) explains the consensus UDRP view that the goods and/or services for which a trade mark are registered are irrelevant when finding rights in a mark. (In assessing the Policy, it is helpful to have regard to consensus decisions of UDRP panels on those parts of the UDRP which overlap with the Policy. The Policy is based on the UDRP and no doubt the drafters of the Policy would have expressly provided otherwise had it been intended to depart from this consensus. The WIPO Overview, while not of course binding in any way, provides a useful summary of UDRP panel views on certain key points. )

The Registrants also argue that at least one, and possibly two, of the Complainants’ trade marks are irrelevant because they are designs. In fact, only one is. There is no reason why a logo trade mark cannot be “misleadingly similar” to a domain name for the purposes of the Policy. It is, however, unnecessary to consider the point because the Complainants own many trade marks for the word “ADIDAS”.

The Registrants say that the Complainants cannot claim a monopoly on words of “common origin” and claim that “DASSLER”, from which part of the mark “ADIDAS” derives, is a reasonably common name in Europe. But this cannot assist the Registrants because the mark at issue in this case is “ADIDAS”, not “DASSLER”.

The Registrants suggest, without explaining why, that “recognition” needs to be given to what is claimed to be the Registrant’s own mark as well as the term “Advanced Detailed Internet Directory And Search” which appears on a recent version of the website at the disputed domain name. The Panel fails to see why these matters are relevant when assessing whether or not the Complainant has established the first condition in paragraph 1.1 of the Policy. They are, however, considered further in relation to the other conditions in paragraph 1.1.

The Registrants say that the domain name suffix “.ie” should be taken into account when comparing domain name and trade mark. Domain name suffixes are, however, generic and wholly without significance in this context. UDRP panels invariably disregard domain suffixes when engaging in such comparisons.

The Panel concludes that, disregarding the domain suffix “.ie”, the disputed domain name is identical to a protected identifier in which the Complainants have rights.

B. Rights or Legitimate Interests

The second condition in paragraph 1.1 of the Policy is that the Registrants have no rights in law or legitimate interests in respect of the domain name.

Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.

The factor in paragraph 3.1.1 of the Policy provides:

“where the registrant can demonstrate that, before being put on notice of the complainant’s interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services or operation of a business”.

The only evidence of the Registrants’ use of the disputed domain name before the Complainant’s cease and desist letter is as a directory website with a list of general affiliate search / shopping links. The Registrants say that this was “an intermediate home page” pending its ultimate use for a search engine website and that this is common practice on the Internet. It may well be common practice but, in the Panel’s view, use of the disputed domain name for general affiliate links unrelated to the domain name itself does not constitute “good faith” preparations / use for the purposes of paragraph 3.1.1 of the Policy.

The Registrants rely further on the alleged considerable time and effort devoted to researching and developing of their “online model” for a search engine website including investment in software and a website, which allegedly occurred before receiving the Complainants’ first communication. No evidence has, however, been supplied in support of this assertion. And mere expectation of future activity is usually irrelevant unless the activity actually occurred before the registrant had notice of the complainant’s interest in the domain name. See Electricity Supply Board v. Lislyn Retail Limited and Northern Retail Limited, WIPO Case No. DIE2003-0001 and Palmerston Limited, Hutchison 3G UK Limited, Hutchison 3G Ireland Limited and Hutchison Whampoa Limited v. Alan Mahon, WIPO Case No. DIE2005-0001. The Registrants’ assertions in the present circumstances fall well short of establishing “demonstrable good faith preparations” for the purposes of paragraph 3.1.1 of the Policy.

The Registrants’ actual use of the domain name for “Advanced Detailed Internet Directory and Search” cannot come within paragraph 3.1.1 because it occurred after the Registrants were put on notice of the Complainants’ interest in the disputed domain name.

In any case, the Registrants’ above activities cannot in the circumstances be said to be in “good faith” under paragraph 3.1.1 of the Policy in light of the Panel’s findings below concerning the Registrants’ motives in registering / using the domain name.

Nor does the Panel consider that the following additional matters relied upon by the Registrants constitute rights or legitimate interests:

1. The Registrants’ alleged proprietorship of a mark “ADIDASDOTIE/ADIDAS.IE”. The Registrants say that they are entitled as a matter of Irish trade mark law to register such a mark and, at times, their Response implies that they have indeed applied for this term as a registered trade mark. But the Registrants do not explain exactly what this alleged mark relates to and exactly how it ties in with their other alleged activities. No supporting evidence relating to it that has been provided.

2. An allegedly high traffic ranking for the website at the disputed domain name. The evidence is rather sketchy here too. In any case, a substantial volume of traffic is not necessarily an indicator of good faith activity by the Registrants. It may mean no more than that a large number of persons are visiting the site in search of the Complainants or their business.

3. An assertion that the Registrants are legitimate business people fully intent on developing their interests including moving their business to the Guinness Enterprise Centre in Dublin. For reasons explained above, such a general claim, unrelated to the domain name and unsupported by evidence, does not assist the Registrants.

4. The Registrants’ ownership of their registered business name. As pointed out below, it is clear to the Panel that the business name was registered to comply with IEDR’s domain name registration requirements and not for any genuine independent business purpose. This business name registration is not, of itself, sufficient to constitute rights or legitimate interests.

5. The fact that the disputed domain name has been registered under a system whereby applicants must demonstrate an entitlement to a domain name. However, the Policy states at paragraph 1.2 that the registration of the domain name, the subject of the dispute, does not constitute rights in law or legitimate interest in respect of the domain name.

The Registrants deny the Complainants’ assertion that it is impossible to conceive of any legitimate use of the Complainants’ trade mark and give some examples such as legitimate resellers of the Complainants’ products. Whether or not that is correct, it is of questionable relevance here because none of the examples appear to apply to the Registrants themselves.

Paragraph 3.1.2 of the Policy does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrants.

Paragraph 3.1.3 does not apply as the domain name is not a geographical indication.

The Panel concludes that the Registrants have no rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The third condition in paragraph 1.1 of the Policy is that the domain name has been registered or is being used in bad faith.

It is relevant to consider, first, why the Registrants registered the disputed domain name and, in particular, whether they did so to target the Complainants in some way or for their own, genuine, business purposes.

For the following reasons, the Panel is satisfied that the Registrants did indeed set out to target the Complainants.

First, the Registrants have advanced an implausible explanation for the disputed domain name, namely that it is an abbreviation for “Advanced Detailed Internet Directory and Search”. The Panel considers that in all likelihood this rationale is simply an attempt by the Registrants to justify their registration / use of the domain name. Indeed it is noteworthy that the business name registered by the Registrants was “adidas.ie” and not “Advanced Detailed Internet Directory and Search”. The “beta” webpage produced by the Registrants under the name “Advanced Detailed Internet Directory and Search” is extremely basic and unconvincing as an indicator of genuine business activity.

Second, the Registrants did not seek to justify the registration on the basis of the above, or any other basis, in response to the Complainants’ pre-action correspondence.

Third, the Registrants do not deny that they were aware of the Complainants’ trade mark when they registered the disputed domain name, nor indeed could they credibly have done so.

Fourth, the evidence indicates that the Registrants have engaged in a pattern of similar behaviour in that they have registered domains name referable to other well-known trade marks such as <nike.ie>, <ipod.ie> and <googel.ie> and have also registered business names linked to those domain names such as “nike.ie”, “ipod.ie” and “Googel Surprise from Alexia.” The Registrants do not explain this beyond saying that they are developing a number of “different online models” and that is why there are a number of registered business names. And, in a very recent decision under the Policy, the Registrants were found to have acted in bad faith in relation to the domain name <buy-sell.ie>. See B & S Limited v. Gabor Varga and Jozsef Petho, WIPO Case No. DIE2006-0005.

In the Panel’s view, the Registrants in all probability registered and/or used the disputed domain name to capitalize unfairly on the goodwill flowing from the Complainants’ well-known trade mark. That is sufficient to constitute registration or use in bad faith for the purposes of the third paragraph of paragraph 1.1 of the Policy.

Insofar as it is necessary to have recourse to paragraph 2.1 of the Policy, which specifies six non-exhaustive factors which may be considered as evidence of registration or use in bad faith, the Complainants have, at least, established the following:

In the Panel’s view, the Registrants’ former website with affiliate search / shopping links was designed to attract and profit from internet users seeking the Complainants. The likelihood of confusion is not diminished by the fact that at some point users arriving at the Registrants’ site might have realized that it was not connected with the Complainants. Like paragraph 4(b)(iv) of the UDRP, paragraph 2.1.4 of the Policy is concerned with the intentional attracting of internet users. Here, the Registrants used the disputed domain name to create “initial interest confusion” on the part of Internet users seeking the Complainants and in order to profit from at least some of that traffic. See, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 and Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168.

Nor does it make any significant difference here that the parties operate in different fields of activity and that there is no evidence of actual confusion or lost business. It is the Registrants’ intentions that are the key issue.

The Registrants highlight what they describe as the Complainants’ neglect in not registering the disputed domain name sooner. But the fact that the Complainants did not for whatever reason register the disputed domain name previously does not, of itself, justify the Registrants registering or using it.

The Registrants also rely on Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club WIPO Case No. D2000-1532 but without explaining exactly why. In that (controversial) majority UDRP decision the famous singer Bruce Springsteen was unsuccessful in relation to <brucespringsteen.com>. But the Panel does not derive any particular benefit from that case because it turned on its own particular facts including the manner in which the respondent used that domain name. Also, some of the aspects of the UDRP dealt with in that case are not replicated in the Policy.

The Registrants suggest that these proceedings are premature in that the Complainants should have resorted to the Irish courts to claim trade mark infringement and/or to attack the registered business name. Certainly, paragraph 7.1 of the Policy makes it clear that the Policy does not prevent the parties having recourse to the courts. If legal proceedings are initiated between the parties, Paragraph 17.1 of the Rules gives the Panel discretion to decide whether or not suspend or terminate the administrative proceeding or to proceed to a decision. But in the absence of any such notification the Panel must proceed to a decision.

And in reaching its decision, the Panel places no weight on the fact that the Complainants have not for whatever reason pursued the same or a related remedy in another forum. Nor is the Panel required to assess whether or not there has been trade mark infringement and passing off under Irish law, matters which have occupied much of the submissions in this case. The only concern of the Panel is whether or not the Complainants have proved the various elements of the Policy.

Finally, the Panel has placed no weight on the IEDR letter produced by the Complainants. The Panel has made up its own mind on the issues.

For the reasons explained above, the Panel concludes that the Complainants have established the three conditions specified in paragraph 1.1 of the Policy.

D. Reverse Domain Name Hijacking

In view of the Panel’s conclusion above, it is unnecessary to consider this point.

 

8. Decision

For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the domain name, <adidas.ie> be transferred to the first Complainant as requested.

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Adam Taylor
Sole Panelist

Dated: January 18, 2007