WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

All Star C.V. v. George

Case No. D2018-0414

1. The Parties

The Complainant is All Star C.V. of Beaverton, Oregon, United States of America ("United States"), represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").

The Respondent is George of Thessaloniki, Greece.

2. The Domain Name and Registrar

The Disputed Domain Name <converseusa.com> is registered with Dynadot, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2018. On February 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 26, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 21, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on April 3, 2018. 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 world famous manufacturer of shoes, apparel, and bags. The Complainant was founded in 1908 as a rubber company and began to produce the shoes in 1909. The Complainant, including through its authorized partners, sells products under its CONVERSE Trademark in large number of countries worldwide.

The Complainant is the proprietor of large quantity of registrations for the CONVERSE Trademark since 1968 around the world (Annex 4). The Complainant owns, amongst others, registrations in the United States (United States Reg. No. 868,375 in classes 25, 28, registered on April 22, 1969), in Greece (Greek Reg. No. 89945 in classes 18, 25, registered on October 17, 1991) and in the European Union (European Union Trademark Reg. No. 007600117 in classes 16, 18, 25, 35, registered on December 11, 2009).

The CONVERSE Trademark has been acknowledged as well-known by numerous decisions of the trademark authorities in different jurisdictions: France, Guatemala, Panama, Republic of Korea, Spain, Taiwan (Province of China), Turkey, Viet Nam (Annex 6). The fame and popularity of the CONVERSE brand is also supported by its high level engagement on social media, by celebrities' embracement of the products under the CONVERSE Trademark (Annex 5) and by different rankings ("www.ranker.com", "www.businessinsider.com" and so on).

The Complainant operates the website "www.converse.com" through which the Complainant sells and promotes shoes, clothing, and accessories under its CONVERSE Trademark. The Complainant registered its domain name <converse.com> on August 9, 1995.

According to the current record, the Disputed Domain Name <converseusa.com> was registered on January 23, 2018.

At the date of this decision, the Disputed Domain Name resolves to a page with an indication: "Services for this domain have been discontinued".

5. Parties' Contentions

A. Complainant

The Complainant has large portfolio of CONVERSE Trademarks in numerous jurisdictions.

The Complainant notes that due to the extensive worldwide sales and advertising over the years, the Complainant's CONVERSE Trademark is recognized by the trade and the public around the world. According to the information provided by the Complaint annual revenue from the Complainant's worldwide sales more than tripled between 2007 and 2017 from more than USD 550 million to more than USD 2 billion. At the same time the Complainant's worldwide promotional and advertising expenditures in 2014 amounted to more than USD 130 million.

The Complainant further contends that the Disputed Domain Name is confusingly similar to its CONVERSE Trademark in view of the Disputed Domain Name wholly incorporates the Complainant's CONVERSE Trademark and couples it with the word "usa" which clearly refers to the United States, the Complainant's largest market.

The Complainant asserts that the Respondent has no rights in relation to the CONVERSE Trademark, that the Respondent does not use the Disputed Domain Name in relation to a bona fide offering of goods and services and that the Respondent is not making legitimate or fair use of the Disputed Domain Name.

The Complainant claims that given the level of fame of the Complainant's CONVERSE Trademark and the fact that the Disputed Domain Name contains identical CONVERSE element, the Respondent registered the Disputed Domain Name in bad faith.

The Complainant finally contends that the Respondent has registered the Disputed Domain Name to create confusion with the Complainant's business in order to benefit from the Complainant's massive reputation in its CONVERSE brand and primarily for the purpose of selling the Disputed Domain Name to the Complainant or to the Complainant's competitor for valuable consideration.

B. Respondent

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

6. Discussion and Findings

According to the paragraph 4(a) of the Policy, a complainant must prove that the respondent has registered a domain name which is:

- identical or confusingly similar to a trademark or service mark in which a complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

It is uncontroverted that the Complainant has established rights in the CONVERSE Trademark based on its numerous registrations for the CONVERSE Trademark and long term use all over the world. Moreover the Complainant's CONVERSE Trademark is well-known worldwide that is also supported by the previous UDRP decisions, see, e.g., Converse Inc. v. Perkins Hosting, WIPO Case No. D2005-0350; Converse Inc. v. Forum LLC, WIPO Case No. D2007-0926.

The Complainant's CONVERSE Trademark is clearly recognizable in the Disputed Domain Name which incorporates the famous CONVERSE Trademark in its entirety followed by the geographical term "usa" and by the generic Top-Level Domain ("gTLD") ".com". As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), paragraph 1.7 in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The addition of geographical term "usa" to the Disputed Domain Name does nothing for distinguishing the Complainant's CONVERSE Trademark and the Disputed Domain Name and, in the Panel's opinion, only enhances the likelihood of confusion by the consumers.

Moreover the Disputed Domain Name, completely comprising the Complainant's Trademark, is obviously deceptive for the consumers with respect to the person producing the goods: entering the website under the Disputed Domain Name the users will most likely believe that they are entering the website related to the Complaint's business in the United States.

In light of the above the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's CONVERSE Trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

Accordingly, the Panel finds that the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights in relation to the CONVERSE Trademark, it is not known by the CONVERSE name, it does not have any trademark registrations incorporating word "converse", and consequently, the Respondent is not making legitimate or fair use of the Disputed Domain Name.

According to the WIPO Overview 3.0, section 2.5.1, UDRP panels have found that the domain names identical to a complainant's trademark carry a high risk of implied affiliation. Certain geographic terms (e.g., ˂trademark-usa.com˃ or ˂trademark.nyc˃) are seen as tending to suggest sponsorship or endorsement by the trademark owner. In this case, the addition of the geographic term "usa" to the Complainant's Trademark in the Disputed Domain Name witnesses that the Respondent was well aware of the CONVERSE Trademark when he registered the Disputed Domain Name and has done so for the only purpose of association with the well-known Complainant's Trademark.

At the same time the Panel finds that the Respondent, being a natural person, is not commonly known by the Disputed Domain Name at all, that demonstrates a lack of rights or legitimate interests in accordance with paragraph 4(c)(ii) of the Policy.

In view of the foregoing the Panel accepts the indisputable fact that nothing indicates the use of the Disputed Domain Name by the Respondent in connection with a bona fide offering of goods or services prior to the Complainant's use and registration of the CONVERSE Trademark. Also there is nothing to indicate that the Respondent made a legitimate noncommercial use of the Disputed Domain Name. Conversely, it appears that the Respondent registered the Disputed Domain Name purely for the purpose of its sale to the Complainant.

Under circumstances, there is a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

As a result the Panel finds that the Complainant succeeds under the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a inexhaustive list of circumstances that indicate to bad faith conduct on the part of the respondent, namely:

"(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

The evidences presented before the Panel shows that the Complainant's CONVERSE Trademark has significant reputation and is commonly known worldwide and, correspondingly, it is very unlikely that at the time of registering of the Disputed Domain Name, incorporating the Complainant's Trademark in its entirety, the Respondent could not have been unaware of the Complainant's well-known CONVERSE Trademark and of the Complainant's rights in this Trademark. Previous UDRP panels have concluded that bad faith is established in the case when the Complainant's Trademark has been acknowledged to be well-known or in extensive use at the time of registering a domain name, see, e.g., Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300. Thus the Panel has no doubts that the Respondent acted in bad faith with good knowledge of the Complainant and its rights in the CONVERSE Trademark.

Furthermore, the Complainant's products, namely shoes, under the CONVERSE Trademark are globally popular, thereby the CONVERSE Trademark has strong distinctive character. Therefore the registration of the Disputed Domain Name which is confusingly similar to the renowned CONVERSE Trademark by a person who has no relation to the Trademark suggests bad faith, see, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 ("is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.")

According to the information provided by the Registrar, the Disputed Domain Name was registered by the Respondent on January 8, 2015 and again on January 23, 2018 that is more than one hundred years after the Complainant had begun producing shoes under its CONVERSE Trademark. In view of this the Disputed Domain Name is more likely was registered by the Respondent for the purpose of targeting the Complainant's goodwill and reputation.

According to the information available on domain name marketplace Sedo, presented by the Complainant (Annex 9), the Disputed Domain Name is offered for sale for EUR 299. The Panel accepts the Complainant's contentions that this evidences the Respondent's bad faith in that he has registered the Disputed Domain Name primary for the purpose of selling it to the Complainant or to the Complainant's competitor. The Panel also accepts that the confusion of the Disputed Domain Name with the famous Complainant's CONVERSE Trademark causes traffic to the Disputed Domain Name and allows the Respondent to benefit from pay-per-click adverts.

The Panel concludes that since the Disputed Domain Name incorporates the Complainant's trademark in its entirety this indicates that the Respondent registered and used the Disputed Domain Name in bad faith by intentionally for creation of Internet users confusion with the world-famed CONVERSE Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website, which constitutes, in its turn, registration and use of the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

Accessing the Disputed Domain Name, the Internet users would most likely consider that it is related to or associated with the Complainant and the Complainant's products.

Moreover the Respondent did not file any response to the Complainant's contentions and the Center's Written Notice, and this evidences nevertheless that the Respondent did not have any good intentions when registering the Disputed Domain Name.

Considering the above the Panel finds that the third element of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <converseusa.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: April 16, 2018