Adidas-Salomon AG v. Worldnet Companies, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

adidas-Salomon

AG v Worldnet Companies, Inc.

Case No.

D2001-1156

1. The Parties

Complainant is ADIDAS-SALOMON

AG, a corporation organised under the laws of Germany, having its principal

place of business in (8522) Herzogenaurach (Ad-Dassler-Strasse 1-2), Germany

and represented by Mr. Gregor S.P. Vos, ("Complainant").

Respondent is WORLDNET

COMPANIES, INC., a corporation organised under the laws of the USA, having its

principal place of business in (33334) Ft. Lauderdale, Florida, USA, (1299 East

Commercial Blvd., Floor #2) ("Respondent").

2. The Domain Name and

Registrar

The domain name at issue

is <adidascasino.com>. The Registrar is Tucows, Inc., 96 Mowat Avenue,

Toronto, Canada ("the Registrar").

3. Procedural History

The complaint was submitted

electronically with the World Intellectual Property Organisation Arbitration

and Mediation Center (The "WIPO Center") on September 21, 2001. The

hardcopy under cover of a letter of the same date was received on September

24, 2001, ("the Complaint"). An Acknowledgement of Receipt was sent

by the WIPO Center to Complainant dated September 21, 2001.

On September 24, 2001,

a Request for Register Verification was transmitted to the Registrar. On September

25, 2001, the Registrar confirmed by e-mail that the domain name <adidascasino.com>

is registered with the Registrar and that Respondent is the current registrant

of that domain name.

On September 26, 2001,

a Notification of Complaint and Commencement of Administrative Proceedings (the

"Commencement Notification") was transmitted by email and by courier to Respondent,

setting a deadline of October 16, 2001, by which Respondent could make a response

to the Complaint.

On October 22, 2001, a

Notification of Respondent Default was sent by email and by courier to Respondent.

On October 30, 2001, the

WIPO Center sent a Notification of Appointment of Administrative Panel and Projected

Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed

as the Sole Panelist.

4. Factual Background

Complainant is the owner

of the trademark ADIDAS, registered worldwide for various goods and services.

See e.g. WIPO registration nos. 487580, 566295 and R358770.

The domain name <adidascasino.com>

was registered on April 22, 1998 by Respondent.

Complainant sent a Cease

and Desist Letter to Respondent on August 9, 2001. In this letter Complainant

also summoned Respondent to transfer the domain name <adidascasino.com>

to Complainant. Complainant did not receive any reply to this letter from Respondent.

5. Applicable Rules

Paragraph 4 (a) of the

Policy directs that Complainant must prove each of the following:

(i) the domain name

in issue is identical or confusingly similar to Complainant's trademark, and

(ii) the Respondent

has no rights or legitimate interest in respect of the domain name, and

(iii) the domain name

has been registered and is being used in bad faith.

Paragraph 4 (b) of the

Policy sets out, by way of example, four circumstances, each of which, if proven,

shall be evidence of the registration and use of the domain name in bad faith

for the purpose of Paragraph 4 (a) (iii) above.

Paragraph 4 (c) of the

Policy sets out, by way of example, three circumstances, each of which, if proven

by Respondent, shall demonstrate Respondent’s rights or legitimate interest

to the domain name for the purpose of Paragraph 4 (a) (ii) above.

6. Parties’ contentions

In 1949 the company of

Complainant was named ADIDAS. From then onwards Complainant started to use and

register, on a worldwide basis, the ADIDAS trademark for its products. Complainant’s

company has subsequently grown into one of the world’s leading sports and fitness

products companies – ADIDAS products are sold in over 160 countries. According

to Complainant the trademark ADIDAS is a well-known trademark within the meaning

of article 6bis of the Paris Convention on the Protection of Industrial

Property.

The grounds for the Complaint

are:

(1) the domain name

<adidascasino.com> is confusingly similar to Complainant’s trademark ADIDAS

in accordance with Paragraph 4 (a) (i) of the Policy. The domain name <adidascasino.com>

is a combination of Complainant’s ADIDAS trademark and of the word "casino".

The mere addition of the word "casino" does not alter the fact that

Respondent’s domain name evidently is confusingly similar to Complainant’s ADIDAS

trademark.

(2) Complainant states

that Respondent has no rights or legitimate interests in respect of the domain

name <adidascasino.com> as provided in Paragraph 4 (a) (ii) in connection

with Paragraph 4 (c) of the Policy.

Complainant has not given

consent, license or other authorisation to Respondent for the use or registration

of the domain name. According to Complainant, Respondent has, until recently,

used the domain name <adidascasino.com> to offer links to <worldnetcasinos.com>,

<supersix.net>, <casinopirata.com> and <aceinthehole.co.cr>.

Under these domain names websites relating to gambling are operating. These

websites are created by companies that are in no way linked to Complainant.

According to Complainant, providing these links cannot be considered as a bona

fide offering of goods or services in connection with the domain name.

Secondly, Complainant states

that Respondent has not been, and is not commonly known by the domain name.

Thirdly, Complainant has

stated that Respondent is not making a legitimate non-commercial or fair use

of the domain name, without intent for commercial gain to misleadingly divert

consumers or to tarnish the trademark ADIDAS. Respondent is evidently relying

on the fame and reputation of Complainant’s trademark to attract visitors to

its website and other gambling related websites.

(3) Complainant states

that the domain name <adidascasino.com> was registered in bad faith as

provided in Paragraph 4 (a) (iii) in connection with Paragraph 4 (b) of the

Policy. According to Complainant Respondent has used the domain name registration

to intentionally attract, for commercial gain, Internet users to its website.

Given the fame of Complainant’s trademark, it is inconceivable that Respondent

was not aware of Complainant’s trademark before registering the domain name.

As Respondent has not submitted

a response to WIPO, Complainant’s contentions are uncontested.

7. Due process

Where, as in this case,

a Respondent does not submit a response and the file does not contain any communication

from Respondent, the rules of due process require the Panel to verify as much

as possible that Respondent is aware of the present proceedings. The Panel is

satisfied, on the basis of the file documents, that this is the case.

A hard copy of Complainant

was sent by the WIPO Center to the address of Respondent mentioned under 1 above

by courier and by email (returned as not deliverable) and to the technical and

administrative contact by email.

The Panel therefore assumes

that Respondent has received these documents, but has chosen not to respond.

8. Discussion and Findings

Complainant must provide

evidence of all elements of Paragraph 4 (a) of the Policy. Since the decision

to transfer or cancel a domain name may have serious consequences for the domain

name holder, the evidence should be sufficient in all respects to support such

a decision. The absence of a response from Respondent, as in this case, does

not discharge the Panel from its duty to establish that the evidence is sufficient.

a. Trademark rights

Complainant has provided

sufficient evidence of its rights to the trademark ADIDAS and that the trademark

ADIDAS is well-known worldwide. See e.g. WIPO registration nos 487580, 566295

and R358770.

b. Identical or confusingly

similar

The domain name <adidascasino.com>

is clearly confusingly similar to Complainant’s trademark ADIDAS. The domain

name incorporates the trademark ADIDAS with the generic word "casino"

and the suffix ".com" (which indicates that the domain name is registered

in the .com gTLD). It is clear that the well-known and distinctive trademark

ADIDAS is the most prominent element in this combination, and that may cause

the public to think that the domain name is somehow connected to the ADIDAS

trademark. (See e.g. WIPO

Case No. D2000-1554 Daimler Chrysler AG v James Cruz <driveamercedes.com>;

WIPO

Case No. D2000-0660 Yahoo! Inc. v Casino Yahoo, Inc. <casinoyahoo.com>;

WIPO

Case No. D2000-0464 Toshiba Corporation v Distribution Purchasing and

Logistics Corporation <toshibastore.com> and WIPO

Case No. D2001-0055 America Online, Inc. v Yeteck Communiciation, Inc.

<aolsportsbet.com>, <aolsports.net>, <aolcasino.com>.)

In view of the above, it

is clear that the domain name and the trademark are confusingly similar. The

ability of the word "casino" to distinguish the domain name from Complainant’s

trademark is limited. The Panel finds that Respondent does not create a new

or different mark in adding the noun "casino" and that this addition

does not alter the likelihood of confusion with Complainant’s trademark.

c. Rights or legitimate

interests

Under paragraph 4 (c) of

the Policy, Respondent may demonstrate that it has a right or legitimate interest

to a domain name for the purpose of Article 4 (a) (ii), inter alia, by

providing evidence of any of the following circumstances:

"(i) before any

notice to you 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 (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 are making

a legitimate non commercial 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."

Respondent apparently intends

to use the domain name for a website which provides links to websites related

to (sports)gambling. Complainant has not given consent, license or other authorisation

to Respondent for such or any other use or registration of the domain name.

The mere fact that Respondent apparently uses the domain name to provide links

to (sports)gambling websites is not sufficient for Respondent to claim a legitimate

interest.

As Respondent has not provided

any counter-evidence of an own right or legitimate interest, it must be assumed

that Respondent has no such right or legitimate interest.

d. Bad faith

Complainant is relying

on Paragraph 4 (b) (iv) of the Policy, which provides that sufficient evidence

of bad faith may consist of:

"(iv) By using

the domain name, you have intentionally intended to attract for commercial gain,

Internet users to your website or other on-line locations, by creating a likelihood

of confusion with Complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of your website or location or of a product or service on your

website or location."

The Panel finds that Complainant

has provided sufficient evidence in this regard. Since Respondent is, among

others, using the domain name <adidascasino.com> to provide links to sports

betting websites, it is difficult to imagine that Respondent was not aware of

the trademark ADIDAS, which is identified worldwide with sport products,

when registering the domain name <adidascasino.com>. Therefore, Respondent

has deliberately included the well-known trademark ADIDAS in the domain name

<adidascasino.com> in order to attract business. Furthermore, Respondent,

by registering and using the domain name <adidascasino.com> has created

the (incorrect) impression of association with Complainant, thereby creating

a likelihood of confusion with that trademark. This confirms that Respondent

has intentionally used the goodwill of Complainant’s trademark to create traffic

to its website operating under the domain name <adidascasino.com>. (See

also e.g. WIPO

Case No. D2000-0413 Chanel, Inc. v Estco).

Additional circumstances

which indicate the bad faith of Respondent are the fact that he has not responded

to the communications of Complainant and has not submitted a response in this

case.

The Panel, therefore, concludes

that there is sufficient evidence that Respondent’s registration and use of

the domain name <adidascasino.com> is in bad faith.

9. Decision

On the basis of the foregoing,

the Panel decides that Complainant has provided the required evidence to request

the transfer of the domain name from Respondent to Complainant. Accordingly,

pursuant to Paragraph 4 (i) of the Policy, the Panel orders the registration

of the domain name <adidascasino.com> be transferred to Complainant.

Wolter Wefers

Bettink

Sole Panelist

Dated: November

13, 2001

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