The Complainant is Diadora Sport Srl of Caerano di S. Marco, Italy, represented by Brandstock Domains GmbH, Germany.
The Respondent is Ni Ming of Guiyang, Guizhou, China. 2. The Domain Names and Registrars
The disputed domain name is registered with the Registrar HiChina Zhicheng Technology Ltd.
The disputed domain name is registered with the Registrar Chengdu West Dimension Digital Technology Co., Ltd.
The disputed domain name is registered with the Registrar Xiamen eName Network Technology Corporation Limited dba eName Corp. 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2016. On August 11, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 12 and August 17, 2016, the Registrars transmitted by email respectively to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
According to the email of the Registrar Chengdu West Dimension Digital Technology Co., Ltd. dated August 16, 2016, the Respondent appeared to be willing to transfer the disputed domain name to the Complainant. On August 16, 2016, the Center invited the Complainant to comment whether it would like to explore settlement with the Respondent. No reply was received from the Complainant.
On August 23, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On August 23 and August 30, 2016, the Complainant confirmed its request for English to be the language of the proceeding. Between August 23 and August 25, 2016, emails written in English were received from the Respondent, however, the Respondent did not comment on the language of the proceeding.
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 in both Chinese and English of the Complaint, and the proceedings commenced on August 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2016.
On August 30, 2016, an email communication written in English was received from the Respondent.
On September 20, 2016, the Center informed the parties that it would proceed with panel appointment.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 27, 2016. 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 sport shoe, clothing and accessories manufacturer, founded in Italy in 1948, and is the owner of the DIADORA marks. The Complainant's DIADORA-branded products are distributed in more than 60 countries and are sold in more than 14,500 retail points around the world. The Complainant's products are currently worn by a number of high-profile athletes such as George Weah, Roberto Baggio, Giuseppe Signori, Francesco Totti, Roy Keane, and Antonio Cassano. Its products have also been worn in connection with major sports events including by Gustavo Kuerten at the Roland-Garros international tennis championship and by the Italian Olympic team during the 2016 Olympic Games in Rio de Janeiro, Brazil.
The Complainant owns several trademark registrations for its DIADORA marks, including International Trademark Registration Nos. 682095 (July 31, 1997), 751069 (January 10, 2001), 460593 (April 27, 1981), 720189 (August 6, 1999), and 751980 (December 22, 2000); European Union Trademark Registration Nos. 339093 (January 7, 1999), 1768480 (November 30, 2001), and 1753482 (July 23, 2001). The Complainant also owns a large number of domain names incorporating its DIADORA mark, including , , , , and , among others.
The Respondent registered the disputed domain name on September 7, 2015, the disputed domain name on September 24, 2015, and the disputed domain name on March 7, 2016.
At the time the Complaint was filed and at the time of this decision the disputed domain names and did not and do not resolve to active websites. At the time of the Complaint, the disputed domain name resolved to a pay-per-click parking page featuring commercial links and ads. At the time of this decision, the disputed domain name redirects to a deep-linked page on the "" website.
The Respondent owns many other domain names that are composed of or include common English terms, including, for example, , , , , , , and . 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain names are identical or confusingly similar to the DIADORA marks, in which the Complainant has rights. The disputed domain names consist entirely of the DIADORA mark paired with a top-Level Domain ("TLD"). Addition of a TLD to the disputed domain names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The TLD is technically required to operate the domain name. It is likely to trigger confusion because the average user will likely believe that the disputed domain names are that used by the Complainant to depict its activities or offer its products and services, particularly in the Cocos Islands and Palau.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not commonly known by the disputed domain names and has acquired no trademark or service mark rights in the mark DIADORA. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain names and have not been exploited in any way and, to the Complainant's knowledge, the Respondent has not intended or made preparations to use those disputed domain names in connection with a bona fide offering of goods or services. Although the disputed domain name pointed to a pay-per-click parking page featuring commercial links, this does not grant the Respondent legitimate interests in this disputed domain name. The Respondent does not make legitimate noncommercial or fair use of the disputed domain names. The Complainant has never granted the Respondent authorization, license or any right whatsoever to use the Complainant's DIADORA trademarks. The Respondent is not commercially linked to the Complainant.
The disputed domain names were registered and are being used in bad faith. The DIADORA trademarks are so widely known that it is inconceivable that the Respondent ignored the Complainant's prior rights to the DIADORA marks. It is clear that the Respondent had the Complainant's name and trademark in mind when registering the disputed domain names. The Respondent's choice of the disputed domain names cannot be considered an accident and must have been influenced by the fame of the Complainant's trademarks. A simple Internet search yields only results related to the Complainant. The Respondent knew, or should have known, that registration and use of the disputed domain names would be in violation of the Complainant's rights.
There is no possible use of the disputed domain names that could be in connection with a bona fide offering of goods or services. Any use of the DIADORA trademark would amount to trademark infringement and would damage the repute of the Complainant's trademark. Any actual use of the disputed domain names would de facto amount to bad faith.
The disputed domain name resolved to a parking page with pay-per-click commercial links. The pay-per-click commercial links' ability to generate revenue depends on the ability of the disputed domain name to attract users seeking information on the owner of the trademark. The disputed domain name only reproduces the Complainant's trademark; therefore, it appears that the disputed domain name is very likely to attract confused Internet users.
The Respondent has engaged in a pattern of behavior in order to prevent the Complainant from reflecting its trademarks in the corresponding domain names. This is clearly evidenced by the fact that the three disputed domain names are identical reproductions of the trademark DIADORA.
Passive holding of a domain name does not prevent a finding of bad faith. A panel must consider all of the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of cumulative circumstances that are indicative of bad faith include the Complainant having a well-known trademark, no response to the Complaint having been filed, and the registrant's concealment of its identity. A panel may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration and vice versa. "Use in bad faith" is not limited to positive action but can also include inaction.
In light of all of the circumstances, the Complainant contends that the disputed domain names were registered and are being used in bad faith by the Respondent.
The Complainant requests that the disputed domain names be transferred to it. B. Respondent
The Respondent did not formally respond to the Complaint. In an email received by the Center dated August 30, 2016, the Respondent indicates willingness to transfer the disputed domain name "free of charge." The Respondent further states: "I am a fan of the Diadora brand." 6. Discussion and Findings Language of the Proceeding
The Panel determines that the language of the proceeding should be in English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. Although the Respondent is in China and the Registration Agreements are in Chinese, the Respondent's conduct suggests that the Respondent understands English. The Respondent corresponded in English by email with the Center. The Respondent has registered several domain names that contain common or generic English words. Additionally, if the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed. Substantive Discussion
The Policy provides for transfer or cancellation of the disputed domain names if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has rights in the DIADORA mark. The Complainant has established that it is the registered owner of various trademark registrations for the DIADORA marks. The Panel accepts that the Complainant's DIADORA mark is well known.
The disputed domain names are composed of the word "diadora" — identical to the Complainant's DIADORA mark. The addition of generic or country code TLDs to the disputed domain names does not avoid a finding that the disputed domain names are identical to the Complainant's mark. As a technical part of a domain name, a TLD is not relevant in determining confusing similarity and is without legal significance. Alienware Corporation v. Truther,WIPO Case No. DCO2012-0027.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainant contends, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use its DIADORA trademark or to register any domain name incorporating that trademark. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The Complainant's DIADORA mark is long-established and widely known around the world. In the absence of any evidence to the contrary, knowledge of the Complainant's rights in the DIADORA mark may be imputed to the Respondent at the time of registration of the disputed domain names. Indeed, here the Respondent has admitted knowledge of and admiration for the Complainant's DIADORA brand, at least tacitly acknowledging the Complainant's rights in the mark. Two of the disputed domain names have not been used in any manner. The disputed domain name has been used with a commercial pay-per-click website. Because the term "Diadora" bears no obvious relationship to the Respondent's activities in connection with the disputed domain name , "[t]he inevitable conclusion is that [this] word[] [is] not one[] that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant." See Harvey Norman Retailing Pty Ltd v. Pty Ltd,WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain names unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda,WIPO Case No. D2001-0067.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 names; or
(ii) The Respondent has registered the disputed domain names 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 names primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such websites or location or of a product or service on such websites or location.
The Respondent must have been aware of the Complainant and its trademarks at the time of registration of the disputed domain names. The Complainant's DIADORA marks are well known throughout the world. The Complainant has used the DIADORA marks in commerce for decades prior to the registration of the disputed domain names. Additionally, the Complainant owns many trademark registrations around the globe. In this case the Respondent has acknowledged awareness of the DIADORA brand. Bad faith registration can be inferred from a respondent's registration of a domain name incorporating a well-known mark of which the respondent must have been aware without any evident right to do so. See Hurruyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C.,WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206; BHP Billiton Innovation v. Ravindra Bala,WIPO Case No. D2008-1059.
The Respondent's pay-per-click use of the disputed domain name falls within the use contemplated in paragraph 4(b)(iv) of the Policy. "Internet users are likely to be drawn to the pay-per-click page by reason of the similarity and resulting confusion between the Domain Name and the [DIADORA] marks." Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc.,WIPO Case No. D2010-2181. Because commercial advantage is the intended result, use of the disputed domain name is in bad faith. See id.
With respect to the disputed domain names and , the Panel finds that given the totality of the circumstances in this case, the Respondent is using the disputed domain names in bad faith. Given that the disputed domain names are identical to the Complainant's extensively used and well-known mark, the Panel finds that the Respondent must have been aware that Internet users would be led to believe that the disputed domain names and resolving websites would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees, supra. Moreover, the Respondent's holding of the disputed domain names prevents the Complainant from reflecting its mark in the same domain names. See id. The Respondent is holding three disputed domain names that are identical to the Complainant's well-known mark, indicating a pattern of abusive registrations to prevent the Complainant from reflecting its trademarks in the corresponding domain names. See Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer,WIPO Case No. DAU2013-0012. Under the totality of circumstances, the Respondent's passive holding of the disputed domain names and amounts to use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.
In light of the above and in the absence of any circumstances that indicate that the Respondent has legitimate interests in using the disputed domain names, the Panel finds that the Respondent is using the disputed domain names in bad faith.
Accordingly, the Panel finds that the disputed domain names were registered and are being used by the Respondent in bad faith. 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 names , , and be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: October 11, 2016
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