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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Earth Products Inc. v. Deng Youqian

Case No. D2008-0256

1. The Parties

The Complainant is Earth Products Inc., of the United States of America, represented by Christensen O’Connor Johnson Kindness PLLC, United States of America.

The Respondent is Deng Youqian of China.

2. The Domain Name and Registrar

The disputed domain name <adioshoes.com> is registered with Rebel.com Services Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2008. On February 20, 2008, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On 20 February 2008, Rebel.com Services Corp transmitted by email to the Center its verification response indicating that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center, the Complainant filed an amendment to the Complaint on 28 February 2008. The Center verified that the Complaint together with the amendment to 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 February 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2008.

The Center appointed Richard Tan as the sole panelist in this matter on April 1, 2008. 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 is a worldwide provider of shoes, clothing, luggage and skateboard items. It is the owner of several registered trade marks in the United States of America for the trade mark ADIO for, inter alia, luggage, tote bags and other bags in IC 18 filed on October 22, 1999, first use August 2000 and registered on January 1, 2002, for watches in IC 14, filed on May 18, 2006, first use December 2005 and registered on March 20, 2007, and for clothing, shoes and other apparel in IC 25 filed on December 9, 1997, first use February 1, 1998 and registered on August 1, 2000. The mark is a fanciful made-up word with no primary meaning in any known language.

The Complainant also owns the domain name <adiofootwear.com> registered on or about March 1, 2000 which is a portal used to advertise its products and the trade mark ADIO.

The Respondent’s domain name was registered on June 25, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) The disputed domain name <adioshoes.com> is confusingly similar to the Complainant’s ADIO trademark, which is a well known mark. It is also very similar to the domain name of the Complainant’s main website <adiofootwear.com> and the only difference is the substitution of the word “shoes” for “footwear”. The Complainant contends that the use of the ADIO mark and the combination of that mark with the word “shoes” creates a likelihood of confusion with the trademark ADIO in which the Complainant has rights by virtue of its numerous trademark registrations referred to above. The Complainant has also expended vast sums of money amounting to US$16 million in advertising the ADIO trademark and goods, has 3,000 retail outlets all of which prominently feature the ADIO trademark and in 2007, the total revenues for goods and services offered in association with the ADIO trademark were more than US$ 48 million. In short, the trademark ADIO is a well-known mark and enjoys widespread recognition and protection.

The Complainant also contends that where the dominant portion of the Complainant’s registered trademark and the disputed domain name is the same, confusion would be likely notwithstanding peripheral differences.

The Complainant further contends that the subject domain name which uses the disputed domain name is being used by the Respondent to sell competing goods and services and this enhances the potential for a likelihood of confusion. If the goods or services of the respective parties are closely related, the degree of similarity required to support a likelihood of confusion is not as great as would apply with diverse goods or services.

(b) The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent has not been granted a license or otherwise permitted to use the Complainant’s well-known trademark. Further, the Respondent has not made demonstrable preparations to legitimately use the subject domain name in connection with a bona fide offering of goods and services. The Respondent is using the subject domain name as a portal website to advertise clothing and related goods and links to other websites that offer goods that are in competition with the Complainant’s goods. The Respondent is effectively using the disputed domain name as a means to redirect consumers to an unrelated site and this does not qualify as a bona fide offering of goods and services.

The Complainant also contends that the Respondent, an individual, is not commonly known by the disputed domain name and has not acquired trademark or service mark rights to that name.

(c) The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith and relies on paragraphs 4(b)(ii), 4(b)(iii) and 4(b)(iv) of the Policy.

The Complainant contends that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name. The Complainant cites various WIPO UDRP case decisions involving one Chen Bao Shui.

The Complainant also contends that the act of registering a domain name that is the equivalent of a mark in which a party has rights has been recognized as evidence of bad faith registration and use. Further, the Respondent’s use of a confusingly similar domain name creates a likelihood of confusion with the Complainant’s trademark by directing traffic away from the Complainant’s website for commercial gain and this falls within paragraph 4(b)(iv) of the Policy. Evidence of this is found in the use of the Respondent’s website which advertises and provides links to the Complainant’s direct competitors’ websites or goods, in particular shoes, for example websites advertising Etnies shoes, DC shoes and Vans shoes, which are all goods sold by competitors of the Complainant. The Complainant further contends that users who intend to visit the Complainant’s website <adiofootwear.com> may inadvertently type the mark ADIO followed by “shoes” instead of “footwear” and be diverted to competitors’ websites instead. The Respondent has intentionally traded upon the goodwill of the Complainant’s trademark for commercial gain.

The Complainant relies on the above facts to show bad faith registration and use of the disputed domain name by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the Respondent’s domain name 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; and

(iii) that the Respondent’s domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, Rule 5(e) provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true, where reasonable, the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, the requirements of the Policy: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Considering the Complainant’s registered trademarks, the nature and history of the Complainant’s business, the efforts and monies expended by the Complainant to advertise its registered trademark ADIO and the widespread and extensive use of the ADIO trademark, the Panel finds that the Complainant has established rights in its ADIO trademark.

The disputed domain name is not identical to the Complainant’s trademark in that it contains the additional word “shoes”. The addition of the generic term “shoes” does not however in the Panel’s view distinguish the domain name from the trademark, bearing in mind the distinctive nature of the Complainant’s mark which the Panel accepts is an invented word with no primary meaning in any known language, as the Complainant contends.

It is clear from a comparison of the Complainant’s ADIO trademark with the disputed domain name that the latter is a reproduction of the ADIO trademark in full with the addition of the generic term “shoes” and the “.com” gTLD.

It is well-established under the Policy that a domain name composed of a trademark coupled with a generic term can still be regarded as confusingly similar to the trademark, see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, ‘automotive’ did not distinguish a respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the Complainant’s EXPERIAN mark in its entirety.

This Panel finds that the addition of the word “shoes” to the Complainant’s ADIO mark is not sufficient to distinguish it from the Complainant’s mark, and that the disputed domain name is confusingly similar therewith.

It has also been established in past decisions that the addition of a “.com” gTLD which is required for the registration of domain names is not sufficient to escape a finding of confusing similarity (see inter alia, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith, WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures , WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015).

The Complainant has relied on the fact that the subject domain uses the disputed domain name to sell competing goods and services and asserts that this use enhances the potential for a likelihood of confusion. However, the Panel find that the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant to the finding of confusing similarity. The test for confusing similarity should be restricted to a comparison between the trademark and the domain name to determine the likelihood of confusion. See for example Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.

The Panel however finds on the other facts that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a disputed 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 Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent has no such rights or legitimate interests and is not related in any way to the Complainant’s business and that the Complainant has granted no licence or authorisation to the Respondent to make any use or apply for registration of the disputed domain name.

The Complainant asserts that the disputed domain name has been registered by the Respondent in order to take advantage of the Complainant’s well-known trademark to confuse and divert Internet users to other commercial sites which are competitors of the Complainant. The Complainant also asserts that the Respondent has not made demonstrable preparations to legitimately use the subject domain name in connection with a bona fide offering of goods and services and that the use of the subject domain name as a portal website to advertise clothing and related goods and links to other websites that offer goods that are in competition with the Complainant’s goods does not qualify as a bona fide offering of goods and services.

The Complainant also contends that the Respondent, an individual, is not commonly known by the disputed domain name and has not acquired trademark or service mark rights to that name. The Panel finds that there is no evidence to suggest otherwise.

In the absence of a Response, the Panel accepts that the purpose of the Respondent having registered the domain name was to rely on the reputation of the ADIO mark to divert users to the Respondent’s website and that the use was not a bona fide offering of goods or services nor a non-commercial or fair use in terms of the Policy.

In the circumstances, the Panel finds that the Complainant has discharged the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that you [the Respondent] have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

The Complainant asserts that the Respondent used the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known ADIO mark.

The Respondent has not submitted any evidence to rebut the Complainant’s claims.

Given the distinctive nature of the trademark ADIO, the Panel is prepared to infer that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark. Such conduct has been consistently found to constitute bad faith under the Policy: See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408 (finding the respondent registered the disputed domain name in bad faith because it had notice of the complainant’s rights); Yahoo! Inc. v. Kelvin Pham, NAF Case No. FA109699.

Further, the Panel is prepared to infer that the registration of the disputed domain name containing the Complainant’s widely-known trademark could not have been for any plausible reason other than to trade on the goodwill of the trade mark owner; Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051, and this would evidence bad faith.

The Complainant has also asserted that the Respondent has engaged in a pattern of conduct constituting bad faith by registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name. The Complainant has referred to various WIPO UDRP case decisions involving one Chen Bao Shui. The Panel however notes that the amended complaint is not against this person, Chen Bao Shui, but against another person, and on the facts and evidence submitted in the amended complaint, there is insufficient material for the Panel to conclude that these two persons are one and the same.

Nevertheless, on the basis of the other findings set out above, the Panel finds that the domain name has been registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy.

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 <adioshoes.com> be transferred to the Complainant.

Richard Tan
Sole Panelist

Dated: April 15, 2008