Complainant is Adidas AG of Herzogenaurach, Germany, represented by Klos Morel Vos & Schaap, The Netherlands.
Respondent is Benson and Partner Ltd of Houston, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through internet services gmbh. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 15, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On February 20, 2012, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 22, 2012. In accordance with the Regulations, article 7.1, the due date for Response was March 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2012.
The Center appointed Dinant T.L. Oosterbaan as the panelist in this matter on April 2, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
According to the evidence submitted by Complainant, Complainant holds a Community trademark registration for ADIPURE with registration number 008325045 and a registration date of December 11, 2009. The Community trademark has been issued prior to the registration of the Domain Name by Respondent. The trademark ADIPURE is being used by Complainant worldwide for a brand of shoes and clothing. The Domain Name was registered by Respondent on January 16, 2012. 5. Parties’ Contentions A. Complainant
Complainant submits that the Domain Name is identical to the ADIPURE trademark as it contains the ADIPURE trademark in its entirety and the top level domain “.nl”, the latter of which can be disregarded. According to Complainant, in view of Complainant’s trademark, Respondent has no rights to or legitimate interests in respect of the Domain Name. Internet users are directed to a website which is a parking page displaying pay-per-click links. Respondent uses the Domain Name without permission from Complainant for commercial gain and with the purpose of benefiting from the reputation of the trademark of Complainant. Complainant submits that Respondent has registered or is using the Domain Name in bad faith as Respondent no doubt had or should have had knowledge of the well-known trademark of Complainant and is intentionally misleading Internet users for commercial gain. In addition, the Domain Name is being offered for sale on the website to which it resolves. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
A. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and
B. the respondent has no rights to or legitimate interests in the domain name; and
C. the domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of a Community trademark registration for ADIPURE. The Domain Name incorporates the entirety of the ADIPURE trademark. The top level domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations.
The Panel finds that Complainant has proven that the Domain Name is identical to Complainant’s ADIPURE trademark. B. Rights or Legitimate Interests
In the Panel’s opinion, Complainant has made a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Based on the evidence provided by Complainant, it appears that by using the Domain Name, Respondent diverts Internet users to a website which is a pay-per-click site featuring links to websites selling Complainant’s goods under the ADIPURE trademark, as well as websites offering goods of Complainant’s competitors. Respondent makes use of the value of the ADIPURE trademark and the likelihood of confusion with the trademark of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. See also paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).1 On the basis of the record the Panel finds that Respondent is not commonly known by the Domain Name nor has it acquired trademark rights.
Under these circumstances the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademark of Complainant was registered as a Community trademark on December 11, 2009, and Complainant has submitted evidence that it has been using the ADIPURE mark for its products since January 2008. These dates are well before the registration date of the Domain Name by Respondent. Considering also the notoriety and distinctiveness of Complainant’s mark, the Panel finds that Respondent knew or should have known that the Domain Name included Complainant’s trademark.
Respondent uses the Domain Name for a website displaying pay-per-click links. In addition the Domain Name has been offered for sale on the website to which it resolves.
On this basis, the Panel finds that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location, which constitutes registration and use in bad faith pursuant to article 3.2(d) of the Regulations. While this is merely an additional consideration, the Panel also notes that Respondent has been found to have registered and/or used domain names in bad faith in several other cases, including decisions under the Regulations, which clearly suggests a pattern of such conduct on the part of Respondent (see, e.g., Vanguard Trademark Holdings USA, LLC v. Benson and Partner Ltd,WIPO Case No. DNL2010-0052; and Arnhem Coming Soon B.V. v. Benson and Partner Ltd,WIPO Case No. DNL2011-0002). 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name be transferred to Complainant.
Dinant T.L. Oosterbaan
Panelist
Dated: April 12, 2012
1 The mechanism of the Regulations is comparable to the Uniform Domain Name Dispute Resolution Policy (UDRP), see Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002.
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