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adidas-Salomon AG v. Vincent Stipo

WIPO Case No. D2001-0372

Outcome
Transfer
Domain names
adidasadidasadidas.com, adidas3stripe.com
Complainant
adidas-Salomon AG
Respondent
Vincent Stipo
Panelist
Nick Gardner
Decided
22 May 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0372.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

adidas-Salomon

AG v. Vincent Stipo

Case No.

D2001-0372

1. The Parties

The Complainant is

adidas–Salomon AG, Adi-Dassler-Strasse 1-2, 91074 Herzogenaurach,Germany.

It is represented by

Mr Gregor S.P.Vos, Nauta Dutilh P.O. Box 7113, 1007 JC, Amsterdam, The Netherlands.

The Respondent is Vincent

Stipo, 3627 Legato Court, Phillips Ranch CA 91766, USA. The Respondent is

not represented and has not filed any Response (see below).

2. The Domain Names

and Registrar

The domain names at

issue are <adidas3stripe.com> and <adidasadidasadidas.com>.

The Registrar is Register.com,

Inc. 575 8th Avenue, 11th Floor, New York, NY 10018,

USA.

3. Procedural History

3.1 The Complaint

was filed with the WIPO Arbitration and Mediation Center ("the Center")

by email on March 14, 2001, and in hard copy on March 16, 2001.

The Center acknowledged

receipt of the complaint on March 23, 2001.

3.2 On March 21,

2001, a request for Registrar verification was transmitted by the Center

to Register.com requesting it to:-

- confirm

that a copy of the Complaint had been sent to it by the Complainant,

as required by WIPO Supplemental Rules for Uniform Dispute Resolution

Policy ("Supplemental Rules"), paragraph 4(b);

- confirm

that the person identified as the Respondent is the current registrant

of the domain names;

- provide

full contact details i.e. postal address(es), telephone number(s),

facsimile number(s), email address(es) available in the Registrar’s

WHOIS database for the registrant of the disputed domain name, the

technical contact and administrative contact for the domain names;

- confirm

that the Uniform Domain Name Dispute Resolution Policy ("the

Policy") adopted by the Internet Corporation for Assigned Names

and Numbers ("ICANN") was in effect;

- indicate

the current status of the domain names.

3.3 On March 22,

2001, Register.com sent an e-mail to the Center indicating as follows:-

- Register.com

had received a copy of the Complaint from the Complainant;

- Register.com

is the registrar of the domain names <adidasadidasadidas.com>

and <adidas3stripe.com>;

- Vincent

Stipo (of the above address) is shown as the "current registrant"

of the domain names. He is also the administrative contact for both

domain names;

- the technical

and zone contact for <adidas3stripe.com> is shown as GreatDomains.com,

19833 Kinzie Street, Chatsworth, CA 91311, USA;

- the technical

and zone contact for <adidasadidasadidas.com> is shown as Register.com,

Domain Registrar, 575 8th Avenue, 11th Floor,

New York, NY 10018, USA;

- Register.com’s

Services Agreement is in effect and it currently incorporates the

Policy;

- the domain

name registrations <adidas3stripe.com> and <adidasadidasadidas.com>

are currently in "active" status.

3.4 Having verified

that the Complaint satisfied the following requirements of the Policy

and the Rules for Uniform Domain Name Dispute Resolution Policy ("the

Rules") the Center, on March 23, 2001, transmitted by post courier,

facsimile and email a notification of the Complaint and of the commencement

of administrative proceedings to the Respondent. A copy of the Complaint

was also emailed to Register.com and ICANN.

3.5 WIPO verified

that the Complaint satisfied the Rules and Supplemental Rules and that

payment was properly made. The Panel is satisfied that this is the case.

3.6 Despite the

Complaint being properly notified to the Respondent in accordance with

paragraph 2(a) of the Rules, the Respondent had filed no response by April

11, 2001 or later. A notice of Respondent Default was issued by the Center

to the Respondent on April 17, 2001 by email.

3.7 The Complainant

elected to have its Complaint resolved by a single member panel; it has

duly paid the amount required of it to the WIPO Center.

3.8 On April 26,

2001, the Center notified the parties that an Administrative Panel, composed

of a single member, Nick Gardner, had been appointed. A statement of acceptance

and declaration of impartiality and independence has been filed by the

Panelist.

3.9 No

further submissions were received by the Center or the Panel. The date

scheduled for issuance of the Panel’s Decision was therefore May 9, 2001.

4. Factual Background

The Complainant owns

the following trade marks and service marks:

ADIDAS

Madrid Protocol Registration

Registration number:

E58770

Issued: 24 July 1989

adidas

Madrid Protocol Registration

Registration number:

487580

Issued: 22 October

1984

THE BRAND

WITH THE THREE STRIPES

US registration

Registration number:

1674229

Issued: February

4, 1992

graphic

(sports shoe with three stripes on it)

Madrid Protocol Registration

Registration number:

426376

Issued: 29 October

1996

graphic

(sports shoe with three stripes on it)

Benelux registration

Registration number:

001339

Issued: 25 February

1971

graphic

(sports shoe with three stripes on it)

Benelux registration

Registration number:

348758

Issued: 19 December

1977

graphic

(three leaves with three stripes)

Madrid Protocol Registration

Registration number:

469145

Issued: 14 July 1982

graphic

(three leaves with three stripes)

Madrid Protocol Registration

Registration number:

498395

Issued: 17 October

1985

adidas

EQUIPMENT [plus graphic (3 stripes)]

Madrid Protocol Registration

Registration number:

566295

Issued: 26 February

1991

The Complainant is

the very well known internationally active company that produces sports

and fitness products such as athletic footwear, sports apparel and sports

equipment like bags and balls. Proof of ownership of these registrations

is furnished in Exhibits 3 to 11 of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant alleges:

(a) The domain

names at issue are confusingly similar to the Complainant’s trade and

service marks because the domain name incorporates the Adidas mark exactly

and uses the Adidas mark as its most salient feature. It also incorporates

the phrase "3stripe". The Complainant has registered several

three stripe figurative trade marks and three stripe word trade marks.

The three stripes are a characteristic feature in many of the Complainant’s

figurative and word trade marks and, because of its extensive and long

continued world wide use, have become a well known indication of origin

of the Complainant’s products;

(b) The Respondent

has no rights or legitimate interests with respect to the domain names

because the Respondent did not use, or make demonstrable preparations

to use, the domain names in connection with a bona fide offering of goods

or services. Until notification of the dispute, the domain names have

not been used by the Respondent. It is evident that the Respondent did

not make any relevant preparations to offer a bona fide service or goods

in connection with the domain names because they had been registered almost

a year ago (March 30, 2000 and

April 2, 2000

respectively). Further the Respondent has not been and is not commonly

known by the domain names. In response to a letter sent by the Complainant’s

counsel, the Respondent claims (in an email dated

September 2,

2001) that his intentions were not to sell any Adidas type website names,

but rather the names were to be associated with two youth soccer teams

which he coached, their names being "adidasadidasadidas" and

"adidas3stripe". The Respondent also states "Please be

advised that my intentions are not to sell any Adidas type website names".

However, the Respondent is offering to sell the domain names at the internet

domain name auction site <afternic.com>.

(c) In addition,

the Respondent is not making legitimate non-commercial or fair use of

the domain names, without intent for commercial gain or to misleadingly

divert customers or tarnish the trade mark Adidas. The Respondent is making

no use of the domain names, other than offering them for sale at the domain

name auction site.

(d) The domain

names were registered and have been used in bad faith because:

(i) The Complainant

enjoys substantial sales of its Adidas sports and fitness products

in over 160 countries;

(ii) By virtue

of the Complainant’s long standing use of the trade marks and service

marks, the Complainant has established significant brand awareness

and enjoys considerable goodwill and fame;

(iii) The

Respondent is not a licensee or distributor of the Complainant. The

Respondent does not have any consent, licence or other authorisation

for the use or registration of the domain names;

(iv) The Respondent

has never been commonly known by the domain names at issue;

(v) The

Respondent is not making any legitimate non-commercial or fair use

of the domain names at issue;

(vi) The circumstances

clearly indicate that the domain names were registered or acquired

by the Respondent primarily for the purpose of selling, renting or

otherwise transferring the domain names to the Complainant or other

competitors of the Complainant. This is due to the fact that the domain

names are offered for sale, together with other trade marks at <afternic.com>.

A total of 19 domain names are offered for sale on that site by the

Respondent.

(vii) There

are circumstances indicating that the Respondent has registered the

domain names in order to prevent the Complainant from reflecting its

trade mark in a corresponding domain name and that the Respondent

has engaged in a pattern of such conduct;

(viii) The

Respondent owns numerous domain names which correspond to third party

trade marks and which he is offering for sale at the domain name auction

site, <afternic.com>. Domains offered include <nikenikenike.com>

and <wwfhulkhogan.com>. It is therefore clear that the Respondent

has engaged in a pattern of registering domain names which reflect

several well known trade marks.

B. Respondent

The Respondent

has made no submissions.

6. Discussion And Findings

6.1 The Panel

has reviewed the Complaint and the documents annexed to the Complaint.

In light of this material and matters that are (on the evidence) not challenged,

the Panel finds as set out below.

6.2 The domain

name <adidas3stripe.com> is, in the judgement of the Panel, confusingly

similar to the Complainant’s trade marks and service marks. The description

that appears on the <afternic.com> auction site for <adidas3stripe.com>

is <adidas3stripe> is the next best thing to <adidas.com>.

6.3 The domain

name <adidasadidasadidas.com> is also confusingly similar to the

Complainant’s mark. Further, on the domain name auction site <afternic.com>,

the domain name is described as "Adidas Sports Equipment".

6.4 The Respondent

has no rights or legitimate interests in the domain name at issue. Although

the Respondent has made no submissions, conclusions can be drawn from

the email from the Respondent (attached at Annex 15 to the Complaint)

to the Complainant’s counsel dated 9 February 2001 which provides as follows:

"Please be advised

that my intentions are not to sell any Adidas type website names.

I have two youth

soccer teams and their names are adidasadidasadidas and the other is adidas3stripe.

We have been given these (sic) nicknames since our teams wear Adidas shoes.

Even though we do not get sponsorship from Adidas we wear their shoes.

Maybe in the future warm-ups etc.

We stand out from

the other teams.

The website names

we have are for our website which is in construction. Would Adidas (sic)

be interested in donating uniforms/warm-ups to our teams? The teams are

under 12 year old boys and under 14 year old boys organised youth soccer

league.

Sincerely,

Vincent Stipo

Head Coach/Trainer".

6.4 This account

appears manifestly improbable and is not supported by any further evidence.

The Complainant’s evidence show the Respondent is offering the domain

names for sale on the <afternic.com> auction site – the minimum

bid for <adidas3stripe.com> is stated as $1,000 and the minimum

bid for <adidasadidasadidas.com> is $500 (see Annex 18 to the Complaint).

This is more than what the Respondent’s out-of-pocket expenses directly

related to the purchase of the domain names would be.

6.5 The evidence

also shows the Respondent engaged in a pattern of such registrations –

there is a list of 19 domain names shown on the AFTERnic site headed "Vincent

Stipo’s Showcase" which is another indication of his commercial intent.

6.6 The Panel

therefore considers that the Respondent has registered and used the domain

names <adidas3stripe.com> and <adidasadidasadidas.com> in

bad faith in that the evidence establishes the Respondent has registered

the names primarily for the purpose of selling, renting or otherwise transferring

the domain name registration to the Complainant who is the owner of the

trade mark or service mark or to a competitor of that complainant, for

valuable consideration in excess of the documented out of pocket costs

directly related to the domain name.

7. Decision

In light of the

above findings, the Panel’s decision is as set out below.

7.1 The domain

names registered by the Respondent are identical or confusingly similar

to the trade marks and service marks to which the Complainant has rights

within the meaning of paragraph 4(a)(i) of the Policy;

7.2 The Respondent

has no rights or legitimate interests in respect of the domain names within

the meaning of paragraph 4(a)(ii) of the Policy; and

7.3 The Respondent's domain

names have been registered and are being used in bad

faith within the meaning of paragraph 4(a)(iii) of the Policy. In particular

they were registered primarily for the purpose of selling them to the

Complainant or to a competitor of the Complainant for valuable consideration

in excess of the Respondent's out of pocket costs directly related

to the domain names (see paragraph 4(b)(i) of the Policy).

Accordingly, pursuant

to paragraph 4(i) of the Policy, the Panel requires that the registration

of the domain names <adidas3stripe.com> and <adidasadidasadidas.com>

be transferred to the Complainant.

Nick Gardner

Sole Panelist

Dated: May

14, 2001

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