WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

adidas AG v. Domain Administrator, Fundacion Privacy Services LTD.

Case No. D2019-2431

1. The Parties

Complainant is adidas AG, Germany, represented by Hogan Lovells (Paris) LLP, France.

Respondent is Domain Administrator, Fundacion Privacy Services LTD., Panama.

2. The Domain Name and Registrar

The disputed domain name <adidaseyewear.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2019. On October 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 31, 2019.

The Center appointed Scott R. Austin as the sole panelist in this matter on November 4, 2019. 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

Complainant states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support:

1) that, since it was founded in 1924, it has become “a multinational corporation that designs and manufactures shoes, clothing and accessories”;

2) that “[i]n 1949, Adi Dassler registered the company Adolf Dassler adidas Sportschuhfabrik, first registering its trade mark ADIDAS THE MARK WITH THE 3 STRIPES in Germany in 1954.” (the “ADIDAS Mark”);

3) that “[s]ince 2000, adidas has been included in the Dow Jones Sustainability Indices (“DJSI”), which evaluate the sustainability performance of the largest 2,500 companies listed in the Dow Jones Global Total Stock Market Index.”;

4) that it employs some 57,000 people from approximately 100 nations throughout the world;

5) that it “produces over 900 million units of its sportswear products annually including over 400 million pairs of footwear, 400 million pieces of apparel and 100 million pieces of hardware”;

6) that “[a]s part of its product range, adidas offers eyewear products manufactured under license by its licensees Silhouette International Schmied AG and Italia Independent”;

7) that it advertises its eyewear products via a number of websites including, “www.adidassporteyewear.com”;

8) that it “is the owner of numerous domain names consisting of or including its ADIDAS trade mark, registered under various generic Top-Level Domains (“gTLDs”) as well as under a number of country code Top-Level Domains (“ccTLDs”)”;

9) that its official website is accessed at “www.adidas.com/us/”;

10) that it “has also made substantial investments to develop a strong presence online by being active on various social-media platforms. For instance, adidas's official Facebook page has over 36 million "likes", while adidas has some 24.6 million followers on Instagram. In addition, adidas has approximately 3.6 million followers on Twitter.”;

11) that it is the owner of numerous trademark and service mark registrations that incorporate the term “Adidas”, including, but not limited to, the following:

a) “German Trademark Registration No. DE 666461, ADIDAS THE MARK WITH THE 3 STRIPES, registered on November 12,1954;”

b) “United States Trademark Registration No. 0891222, ADIDAS, registered on May 19, 1970, for goods in International Class 25;”

c) “German Trademark Registration No. DE 954674, ADIDAS registered in 1977 for goods in International Class 25;”

d) “United States Trademark Registration No. 2138288, ADIDAS, registered on February 24, 1998, for goods in International Class 9;”

e) “European Union Trade Mark Registration No. 005271580, registered on July 3, 2007, for goods and services in International Classes 3, 9, 14, 18, 25, 28 and 41; and”

f) “International Registration No. 588920, registered on June 17, 1992, for goods in International Classes 9 and 14, designating Antigua and Barbuda; Armenia; Austria; Azerbaijan; Belarus; Belgium; Bhutan; Bosnia and Herzegovina; Botswana; Bulgaria; Cuba; Croatia; Czech Republic; Egypt; Estonia; Eswatini; France; Georgia; Ghana; Greece; Hungary; Italy; Kazakhstan; Kenya; Kyrgyzstan; Latvia; Lesotho; Lithuania; Luxembourg; Republic of Moldova; Mongolia; Montenegro; Morocco; Mozambique; Namibia; Netherlands; North Macedonia; Oman; Poland; Portugal; Romania; Russian Federation; San Marino; Serbia; Slovakia; Slovenia; Spain; Syrian Arab Republic; Tajikistan; Turkmenistan; Ukraine; United Kingdom (the); Uzbekistan and Viet Nam.”

12) that the disputed domain name was registered on March 24, 2009, by Respondent and at the time of filing, “resolved to a parking page displaying sponsored pay­per­click (PPC) links to various websites, including specific reference to the Complainant” and “[w]hen clicked on, the PPC links redirect Internet users to various other pages displaying sponsored PPC links”, which for the most part “refer to third-party eyewear retailers.”

5. Parties’ Contentions

A. Complainant

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because the disputed domain name contains the ADIDAS Mark in its entirety and “the addition of the term "eyewear" does not prevent a finding of confusing similarity where the Complainant's ADIDAS trade mark remains clearly recognizable in the Domain Name.” “Moreover, the applicable gTLD, in this case ".com", may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement.”

2. Respondent has no rights or legitimate interests in the disputed domain name because:

a) “The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its ADIDAS trade mark, in a domain name or otherwise”;

b) “At the time of filing, the [disputed domain name] resolves to a parking page displaying PPC links, including references to the Complainant as well as eyewear retailers offering goods in competition with those of the Complainant, from which the Respondent presumably derives revenue.”

c) “The Respondent cannot plausibly claim that it is commonly known by the [disputed domain name], within the meaning of paragraph 4(c)(ii) of the Policy” where “Respondent's identity is in fact masked by a privacy service”; and

d) The Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers where ”[t]he only apparent use of the Domain Name has been in connection with a parking page displaying PPC links, the primary purpose of which is to obtain click-through revenue.”

3. The disputed domain name has been registered and is being used in bad faith because:

a) Respondent registered the disputed domain name in full knowledge of the Complainant’s rights;

b) Given that Complainant’s ADIDAS Mark is highly distinctive and famous throughout the world and continuously and extensively used since at least as early as 1949 in connection with the Complainant's sportswear and sports equipment, “Respondent could not plausibly argue that it did not have knowledge of the Complainant’s ADIDAS trade mark at the time of registration of the [disputed domain name] in 2009.”

c) “Prior UDRP panels have acknowledged that it is highly unlikely that a respondent would not have had awareness of the Complainant’s rights given the Complainant’s popularity worldwide”;

d) the contents of the website at the disputed domain name suggest actual knowledge because the links displayed include at least one that targets the ADIDAS Mark;

e) “the Domain Name has been used in connection with a parking page displaying PPC links, including references to the Complainant as well as to third parties offering goods in competition with those of the Complainant”;

f) “a strong inference can be drawn that the [disputed domain name] was registered by the Respondent for the purpose of deriving click-through revenue from Internet users seeking the Complainant's eyewear products at [Complainant’s authorized website] https://www.adidassporteyewear.com/” among others”;

g) “Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website pursuant to paragraph 4(b)(iv) of the Policy”; and

h) Given the circumstances, “Respondent’s use of a privacy service to mask its identity may be seen as further evidence of the Respondent’s bad faith.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith. (Policy, paragraph 4(a).)

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, as well as supporting documents, the Panel finds that Complainant has established trademark rights in and to the ADIDAS Mark used by Complainant and its licensees in connection with, inter alia, the sale of eyewear. Complainant’s rights in its ADIDAS Mark existed and were used for many years prior to the registration of the disputed domain name.

Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because the disputed domain name contains the ADIDAS Mark in its entirety and the addition of the term “eyewear”, a descriptive term for Complainant’s business of providing sports eyewear through its licensees under the ADIDAS Mark, along with a generic Top-Level Domain (“gTLD”), and that neither of these additions prevent confusing similarity between Respondent’s disputed domain name and the ADIDAS Mark.

For the disputed domain name to be found identical or confusingly similar to the ADIDAS Mark, the relevant comparison is with the second-level portion “adidaseyewear” of the disputed domain name, <adidaseyewear.com> as it is well established that the gTLD “.com” may generally be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.11 (“ WIPO Overview 3.0”), (Top-Level Domain as technical requirement for domain name registration is disregarded under the confusing similarity test).

Prior UDRP panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term and a gTLD to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy, paragraph 4(a)(i). See Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANAB,WIPO Case No. D2018-1138 (panel finds that dictionary word “company”, commonly defined as “a commercial business”, does not alleviate confusing similarity between the Complainant’s trade mark and disputed domain name <marlboro-company.business>).

Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms on a more complex level, such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy, but may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (“The issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.”).

Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

One panelist noted in a recent decision citing section 1.7, “That straightforward test is met here because the Disputed Domain Name wholly incorporates the trademark at issue” Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633; see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”);

The disputed domain name here incorporates the entirety of Complainant’s ADIDAS Mark and that reason is sufficient for this Panel to find the disputed domain name confusingly similar to Complainant’s ADIDAS Mark.

Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because:

a) “[t]he Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its ADIDAS trade mark, in a domain name or otherwise.”;

b) “[a]t the time of filing, the [disputed domain name] resolves to a parking page displaying PPC links, including references to the Complainant as well as eyewear retailers offering goods in competition with those of the Complainant, from which the Respondent presumably derives revenue.”;

c) “[t]he Respondent cannot plausibly claim that it is commonly known by the [disputed domain name], within the meaning of paragraph 4(c)(ii) of the Policy” where “Respondent’s identity is in fact masked by a privacy service”; and

d) the Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers where ”[t]he only apparent use of the Domain Name has been in connection with a parking page displaying PPC links, the primary purpose of which is to obtain click-through revenue.””

Under this second element of the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, “the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element,” WIPO Overview 3.0, section 2.1.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, stating, without challenge by Respondent, that “[t]he Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its ADIDAS trade mark, in a domain name or otherwise.”

Complainant contends Respondent has no rights or legitimate interests because “[t]he Respondent cannot plausibly claim that it is commonly known by the [disputed domain name], within the meaning of paragraph 4(c)(ii) of the Policy” where “Respondent's identity is in fact masked by a privacy service”. Upon review of the evidence submitted the Panel agrees with Complainant. See Marriott International, Inc. v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610 (no legitimate interest when there is no evidence that respondent is commonly known by the domain name). Based on the foregoing and the Panel’s review of the WhoIs evidence submitted by Complainant, the Panel finds Respondent is neither authorized to use nor commonly known by the disputed domain name and Complainant has met its prima facie burden under this element of the Policy.

Complainant also argues that “At the time of filing, the Domain Name resolves to a parking page displaying PPC links, including references to the Complainant as well as eyewear retailers offering goods in competition with those of the Complainant, from which the Respondent presumably derives revenue.”

Section 2.9 of the WIPO Overview 3.0 provides in pertinent part, "Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users." WIPO Overview 3.0, section 2.9. See, e.g., Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708 (Panel finds Respondent has no rights or legitimate interests in the disputed domain name where sole purpose of the disputed domain name is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links for commercial benefit).

Accordingly, as a result of Complainant’s evidence sufficient to meet its burden of a prima facie case and without any evidence from Respondent to the contrary, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:

(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Complainant contends that Respondent registered the disputed domain name in full knowledge of the Complainant’s rights, stating, “ADIDAS trade mark is highly distinctive and famous throughout the world. It has been continuously and extensively used since at least 1949 in connection with the Complainant’s sportswear and sports equipment, having acquired considerable goodwill and renown worldwide”. Complainant’s evidence in support of its allegations is sufficient for the Panel to agree that Respondent could not plausibly argue that it did not have knowledge of Complainant’s ADIDAS trademark at the time of registration of the disputed domain name in 2009.

Prior UDRP panels have acknowledged that it is highly unlikely that a respondent would not have had awareness of Complainant’s rights given Complainant’s popularity worldwide. See, e.g.adidas-Salomon AG v. Mti Networks Ltd,WIPO Case No. D2005-0258.

The Panel finds that given the decades of prior use of Complainant’s ADIDAS Mark prior to Respondent’s registration of the disputed domain name, the worldwide fame or the ADIDAS Mark and that Respondent’s website landing page includes links targeting Complainant’s ADIDAS Mark, Respondent registered the disputed domain name with actual knowledge of Complainant’s ADIDAS Mark in bad faith. See WIPO Overview 3.0, section 3.2.2; see, e.g. eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 (actual knowledge of Complainant’s rights in its trademarks a factor supporting bad faith).

The Panel next considers Respondent’s selection of the dictionary term appended to Complainant’s ADIDAS Mark as an additional factor supporting a finding of bad faith registration of the disputed domain name.

As explained by the WIPO Overview 3.0, section 3.2.1: “Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include:

i…]

(ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion); See, e.g.Georgia-Pacific Consumer Products LP v. Whois Privacy Services Pty Ltd. / Conquistador Sat, WIPO Case No. D2013-1458 (bad faith registration found where Respondent domain name added the generic terms “paper” and “towels” to complainant’s trademark BRAWNY because both generic terms “have an obvious connection with Complainant because they describe the products that Complainant sells under the trademark BRAWNY”); Marlette Funding, LLC v. Whois Privacy Corp, WIPO Case No. D2018-1907 (bad faith registration found where Respondent added terms descriptive of complainant’s activities, “loans” and “reviews”, to complainant’s BEST EGG mark in its entirety to create the disputed domain name, which resolved to website offering services similar to those of the complainant because “the Respondent is seeking to create a false association with the Complainant’s trading activities”); TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, cited in WIPO Overview 3.0, section 1.8 (panel finds that the addition of the word “transactions” to AUTOTRADER mark in disputed domain name <autotradertransactions.com> “increases the confusing similarity, as Complainant's Mark is used in connection with advertising for automobile sales transactions.”).

As noted above in the Panel’s consideration of the first element, the disputed domain name appends to the ADIDAS Mark the term “eyewear”, a descriptive term for Complainant’s business of providing eyewear products through its licensees under the ADIDAS Mark.

Since Complainant offers eyewear products manufactured under license by its licensees Silhouette International Schmied AG and Italia Independent, Complainant contends that “a strong inference can be drawn that the Domain Name was registered by the Respondent for the purpose of deriving click-through revenue from Internet users seeking the Complainant's eyewear products at “www.adidassporteyewear.com”, among others”.

The Panel finds it is clear from the record that the disputed domain name was registered with the intention that it would be confused with Complainant’s established rights in the ADIDAS Mark. The Panel also finds Respondent’s choice of this dictionary term as an additional factor showing that Respondent registered the disputed domain name in bad faith to create a false association with Complainant’s products and to attract Internet users to Respondent’s online website by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website.

Given the degree of distinctiveness and reputation of Complainant’s world famous ADIDAS Mark, the failure of the Respondent to submit a response and Respondent’s use of the disputed domain name intentionally to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website pursuant to paragraph 4(b)(iv) of the Policy the Panel finds Respondent has registered and used the disputed domain name in bad faith, seeWIPO Overview 3.0, section 3.5; seealso Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <adidaseyewear.com> be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: November 18, 2019