WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Reebok International Limited v. Yorkshire Enterprises Limited Case No. D2008-1839 1. The Parties
The Complainant is Reebok International Limited of Bolton, United Kingdom of Great Britain and Northern Ireland represented by Klos Morel Vos & Schaap of The Netherlands.
The Respondent is Yorkshire Enterprises Limited of St. Johns, Antigua and Barbuda. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc (“Tucows”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2008. On December 1, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On December 1, 2008, Tucows 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 sent an email communication to the Complainant on December 5, 2008 inviting the Complainant to submit an amendment to the Complaint regarding the details of the registrar of the domain name. The Complainant filed an amendment to the Complaint on December 8, 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2008. On December 10, 2008 the Respondent wrote to the Center indicating its intent to transfer the disputed domain name. As it was against the Complainant's policy to consider settlement at this stage of the proceedings, the Complainant did not agree to a suspension and requested that the proceedings proceed accordingly.
In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on December 31, 2008.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on January 16, 2009. 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 following summary sets out the uncontested factual submissions made by the Complainant:
(a) REEBOK is a brand for sports fitness and casual footwear, apparel and equipment. The REEBOK brand was first created in 1958 and introduced in the United States of America in 1979. From then onwards, the Complainant started to use and register the REEBOK trademark on its products on a worldwide basis. Reebok has since grown into an industry leader for the design, manufacturing and marketing of sports gear and related apparel.
(b) The Complainant is the owner of the REEBOK trademark and company name. This trademark has been registered worldwide for various goods and services in almost every country of the world including Antigua and Barbuda (the Respondent's home territory). The designated goods include sports gear and related apparel for a wide range of sports such as athletics, basketball, soccer and hockey.
(c) The Complainant has used the REEBOK trademarks extensively. In the last three years, global sales of products under the REEBOK brand reached over EURO 2,300 million per year.
(d) Reebok has been involved as an official licensee, partner, sponsor and/or supplier of many renowned sports series including the National Football League (NFL) and the National Basketball Association (NBA). The marketing and sponsoring strategies have also resulted in endorsements by many top athletes like NBA-superstars Allen Iverson and Yao Ming, soccer players Thierry Henry and Andriy Shevchenko and golf legend Greg Norman.
(e) As a consequence of extensive, long-continued and worldwide use and marketing, the REEBOK trademarks enjoy considerable goodwill and fame.
(f) The website which the domain name in dispute resolves to contains sponsored listings and random information including information of the Complainant's competitors. 5. Parties' Contentions 5.1 Complainant
(a) The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's REEBOK trademark for the following reasons:
(i) the domain name incorporates the Complainant's registered REEBOK trademarks; and
(ii) the addition of the generic word “kids” does not prevent the domain name from being identical or confusing similar to the REEBOK trademarks especially since the Complainant also produces a specific product line for kids.
(b) The Complainant further states that the Respondent does not have any rights or legitimate interests in respect of the domain name as the Respondent:
(i) has not been licensed or otherwise authorized by the Complainant to register or use the domain name;
(ii) has not provided any evidence to prove its rights or interests to the domain name;
(iii) is not commonly known by the domain name; and
(iv) is using the domain name for commercial gain in a misleading and unfair manner as the domain name resolves to a website which contains sponsored listings and random information including information on the Complainant's competitors.
(c) In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(i) given the fame and distinctiveness of the REEBOK trademark, the registration of the domain name in dispute by the Respondent by itself can be regarded as bad faith;
(ii) it can inferred that the Respondent already knew or at least should have known that the registration and use of the domain name in dispute without the permission of the Complainant would constitute bad faith or an infringement of the Complainant's trademark rights. The Respondent had actual or constructive knowledge of the Complainant's rights as:
- the REEBOK trademark is known worldwide and is highly successful and reputable;
- any trademark search of the records of the various worldwide trademark offices would have revealed the rights of the Complainant;
- the Complainant already owns and operates several other domain names incorporating the REEBOK trademark including which has been operational since 1994; and
- The REEBOK trademark is also registered in Antigua and Barbuda, the home territory of the Respondent;
(iii) in the absence of any legitimate prior use by the Respondent, the primary reason of the Respondent in registering the domain name in dispute is to disrupt the business of the Complainant; and
(iv) the domain name resolves to a website that contains sponsored listings of commercial websites. The Respondent, therefore, intends to attract Internet traffic for commercial gain by creating a likelihood of confusion. 5.2 Respondent
The Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(i) that the 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 rights in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. 6.1 Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant in support of its claim to having rights to the REEBOK trademark.
The domain name in dispute comprises the trademark REEBOK in its entirety. The addition of the word “kids” to the trademark, merely lends the domain name a descriptive feature in that the domain name may resolve to a website products, services or information concerning or relating to REEBOK and kids.
From the Panel's perspective, the additional descriptive term “kids” is insufficient to distinguish the similarities between the REEBOK trademark and the disputed domain name.
In adidas-Salomon AG v Digi Real Estate Foundation, Patrick Williamson,WIPO Case No. D2006-0748, which involved a well-known sports brand and the domain names , and , the panel held as follows, “the term ‘adidas' is the distinctive part of the disputed domain names. Little is added to the overall impression of the disputed domain names by the generic sports terms “skate”, “football”, and “soccer”. The addition of the generic sports words to the trademark ADIDAS will mislead Internet users to assume that the websites are connected with the Complainant and that they will find, on such websites information of the Complainant's assortment of, for instance, soccer articles” (see also Thomson Broadcast and Media Solution Inc., Thomson v Alvaro Collazo, WIPO Case No. D2004-0746; V&S Vin & Sprit AhB v Giovanni Pastore, WIPO Case No. D2002-0926).
Based on the above circumstances, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant in that the domain name in dispute is identical or confusingly similar to the Complainant's trademark. 6.2 Rights or Legitimate Interests
The Complainant's assertions have not been rebutted by the Respondent to indicate whether it had rights or legitimate interests in the domain name in dispute. There is nothing in the name of the Respondent to indicate that it was known by any of the words constituting the domain name in dispute. The Complainant had also stated that it had not given any consent, permission, licence or authority to the Respondent to use the REEBOK trademark or to register the domain name in dispute.
Furthermore, the evidence adduced by the Complainant indicates that the domain name in dispute resolved to a website which only contains a search page with sponsored listings and random information, including information relating to the Complainant's competitors. There does not, therefore, appear to be any grounds that the Panel can find to support a counter-argument that the domain name is being used for legitimate non-commercial or fair use. On the contrary, the appearance of sponsored listings suggests that the Respondent derives or intended to derive or is in a position to derive commercial gain from these sponsored listings on the basis of a “pay-per-click” arrangement.
Based on the above circumstances, the Panel is therefore satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant in that the Respondent has no rights or legitimate interests in the domain name in dispute. 6.3 Registration and Use in Bad Faith
The Panel is satisfied with the evidence adduced by the Complainant in support of its contention that the trademark REEBOK is a well-known trademark. In Victoria's Secret et al v. Powerbiz, FA96497, the panel held that bad faith was established by virtue of the registration of a domain name which consisted of a well known mark (see also Exxon Mobil Corporation v. Joseph Fisher,WIPO Case No. D2000-1412; Geoffrey, Inc. v. Peter Ioannou, FA102481; Samsonite Corporation v. Colony Holding, FA94313).
The Panel finds it untenable for the Respondent to be able to argue that it had no knowledge or was not aware of the Complainant's trademark when it registered and started using the domain name in dispute and, therefore, accepts the contention put forward by the Complainant in this regard.
Having also carefully considered the evidence adduced by the Complainant and in particular the print-outs from the website located at “www.”, the Panel could not find any legitimate link between the Respondent and the words “reebokkids”. The absence of such link suggests that the words “reebok” and “kids” were calculatively selected by the Respondent to form a domain name in order to ride on the Complainant's reputation and goodwill in the REEBOK trademark.
Moreover, the fact that the domain name resolves to a search page that contains sponsored listings to third party websites lends support to this finding. It appears that the Respondent seeks to generate Internet traffic (and, hence, commercial gain resulting from the flow of such traffic) caused by the confusion or initial confusion which arises due to the similarities between the Complainant's well-known trademark and the domain name. The resulting effect is that the Respondent generates, may generate or is in a position to generate unjustified revenues from the capitalization of the Complainant's REEBOK trademark (see also Boehringer Ingelheim Pharma GmbH & Co v Philana Dhimkana,WIPO Case No. D2006-1594; American Diabetes Association v Domain Administration Limited,WIPO Case No. D2006-0921; Scania CV AB (Publ) v Unaci, Inc.,WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556).
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant and that the domain name was registered and used in bad faith. 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, be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: January 30, 2009
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