{ "case_number": "CAC-UDRP-104793", "time_of_filling": "2022-08-18 09:31:39", "domain_names": [ "zapatillasdiadoraoutlet.com", "diadorajpshoes.com     ", "diadoracasale.com", "diadoraturkiye.com", "diadoracanada.com        ", "diadoradanmark.com", "diadoradeutschland.com", "diadorafrance.com         ", "cheapdiadoracanada.com", "diadoraskoroutlet.com", "diadorascarpeitalia.com", "diadora-polska.com", "diadorasaleuk.com", "diadoramalaysia.com", "diadoraportugal.com", "diadorafactoryoutlet.com", "diadora-espana.com", "diadorahungary.com", "diadoraireland.com", "diadora-portugal.com", "diadora-nederland.com" ], "case_administrator": "Iveta Špiclová (Case admin)", "complainant": [ "Diadora S.p.A." ], "complainant_representative": "Convey srl", "respondent": [ "Whoisprotection.cc" ], "respondent_representative": null, "factual_background": "The Complainant’s contentions can be summarised as follows:\r\n\r\nA. Background History\r\n\r\nThe Complainant is an athletic footwear and apparel manufacturer founded in 1948 in Italy by Marcello Danieli. The Complainant’s name derives from the Greek word “dia-dora” which has the meaning in English of “to share gifts and honours”. The Complainant produces football boots and athletic shoes in addition to a wide range of apparel. The Complainant’s products have been worn in connection with major sports events worldwide. \r\n\r\nIn addition to the trade marks mentioned in the above section “Identification of rights”, and many other trade marks in its portfolio, the Complainant informs that it is also the owner of numerous domain names which contain the term “diadora”, most notably (registered on 19 October 2013), and (registered on 21 May 2014). \r\n\r\nThe Complainant seeks to obtain the ownership of disputed domain names on the grounds set out in section B below. \r\n\r\nB. Legal Grounds\r\n\r\nB.1 Preliminary Matter: Application for Consolidation\r\n\r\nThe Complainant informs that the registrant\/holder on record of the following disputed domain names is “Whoisprotection.cc”: \r\n\r\n; ; ; and .\r\n\r\nThe Complainant further informs that the registrant\/holder on record of the following disputed domain names is “Web Commerce Communications Limited”:\r\n\r\n; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; and .\r\n\r\nNotwithstanding the above, the Complainant avers that the disputed domain names are subject to an evident common control, thereby making the consolidation of these UDRP proceedings equitable and procedurally efficient (“the Complainant’s Application for Consolidation”).\r\n\r\nThe Complainant’s Application for Consolidation is grounded on the following factors:\r\n\r\ni. the disputed domain names share the same generic Top-Level Domain (“gTLD”) <.com>;\r\n\r\nii. the disputed domain names were all registered with the same Registrar;\r\n\r\niii. the dispute domain names contain generic terms\/country names in their string in addition to the DIADORA trade mark; \r\n\r\niv. the websites corresponding to the disputed domain names contain the identical sections “Social Medial Follow Us” and “Newsletter Sign-Up”; and \r\n\r\nv. the same products are offered for sale on the websites at the disputed domain names.\r\n\r\nThe Complainant’s Application for Consolidation also takes stock of paragraph 4.11.2 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), which enumerates circumstances underpinning the panel’s consideration of a consolidation application. \r\n\r\nFor the foregoing reasons, the Complainant requests that the disputed domain names and the named Respondents be consolidated into a single UDRP proceeding.\r\n\r\nFor present purposes, the registrants\/holders on record of the disputed domain names are hereinafter referred to collectively as “the Respondent”.\r\n\r\nB.2 Substantive Grounds \r\n\r\nI. The disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights\r\n\r\nThe Complainant submits that the disputed domain names incorporate the Complainant’s trade mark DIADORA in its entirety; that the addition of the generic\/geographical terms in the disputed domain names have no bearing on the confusing similarity test nor does the gTLD <.com>; instead, the geographical terms are all the more apt to induce confusion among Internet users, in so far as such combination could suggest a link between the Complainant and the registrants\/holders of the disputed domain names. The Complainant concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark DIADORA.\r\n\r\nII. The Respondent has no rights or legitimate interests in respect of the disputed domain names\r\n\r\nThe Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent does not carry out any activity for, or has any business with, the Complainant. Neither licence nor authorisation has been given to the Respondent to make any use of the Complainant’s trade mark DIADORA or the disputed domain names. Moreover, the Respondent is not known by the disputed domain names as individual, business, or other organisation, and the Respondent’s family names do not correspond to the word “Diadora” or the disputed domain names. \r\n\r\nThe Complainant further asserts that the disputed domain names were registered between April 2021 and April 2022, and that, save for the disputed domain names and , they all resolve to websites (of similar layouts) on which the Complainant’s prima facie counterfeit DIADORA products appear to be commercialised (“the Respondent’s websites”). The Complainant claims that the Respondent’s websites demonstrate neither a bona fide offering of goods nor a legitimate interest of the Respondent. In addition, the Complainant claims that the Respondent has failed to meet the Oki Data test to the extent that the Respondent’s websites do not disclose accurately and prominently the Respondent’s relationship with the trade mark holder (third requirement).\r\n\r\nIn view of the above, the Complainant concludes that the Respondent has no rights or legitimate interests in the dispute domain names. \r\n\r\nIII. The Respondent registered and is using the disputed domain names in bad faith\r\n\r\nRegistration\r\n\r\nThe Complainant argues that it is inconceivable that the Respondent was unaware of the existence of the Complainant when it registered the disputed domain names. The Complainant further argues that the Respondent’s actual knowledge of the DIADORA trade mark is demonstrated by the Respondent’s offering for sale of replicas of the Complainant’s goods and by the Respondent’s use of the DIADORA trade mark and copyrighted images on the websites corresponding to the disputed domain names.\r\n\r\nThe Complainant contends that, by registering the disputed domain names which are confusingly similar to the DIADORA trade mark, the Respondent has been engaged in a pattern of conduct preventing the Complainant from reflecting the DIADORA trade mark in corresponding domain names (paragraph 4(b)(ii) of the UDRP Policy).\r\n\r\nUse \r\n\r\nThe Complainant avers that the Respondent uses the disputed domain names in bad faith in so far as the Respondent’s websites create the false impression of a potential affiliation or connection with the Complainant, without authorisation being given to the Respondent to register and use the trade mark DIADORA on the Respondent’s websites or at all.\r\n\r\nFurthermore, the Respondent’s websites do not contain express disclaimers regarding the absence of relationship between the Complainant and the Respondent. \r\n\r\nIn order to further support the Complainant’s assertions under this Policy ground, the Complainant alludes to paragraph 3.3 of the WIPO Jurisprudential Overview 3.0.\r\n\r\nAs additional indicia giving rise to a presumption of bad faith, the Complainant refers to the Respondent’s failure to respond to the Complainant’s cease-and-desist letter. \r\n\r\nMoreover, the Complainant asserts a separate bad faith claim in respect of the disputed domain names and .\r\n\r\nThe Complainant contends that the above disputed domain names are held passively, and that this can give rise to a finding of bad faith registration and use according to the passive holding doctrine as follows: (i) the Complainant’s trade mark has a strong reputation and is widely known; (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names; (iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name; (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and (v) taking account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by been a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trade mark law.\r\n\r\nThe Complainant therefore concludes that the Respondent has registered and is using the disputed domain names in bad faith. ", "other_legal_proceedings": "The Panel is unaware of any other pending or decided legal proceedings in respect of the domain names ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; and (“the disputed domain names”). ", "no_response_filed": "The Respondent has not provided a Response within the time prescribed under the UDRP Rules, or at all.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the UDRP Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP Policy).", "procedural_factors": "Preliminary Matter: Complainant’s Application for Consolidation\r\n\r\nThe Complainant has advanced an application to consolidate its UDRP claims against the two registrants\/holders of the disputed domain names (identified in section B.1 above) into one single UDRP proceeding, for the reasons articulated in the same section B.1. \r\n\r\nThe Panel has considered the available record, the UDRP legal framework, and the WIPO Jurisprudential Overview 3.0 (paragraph 4.11.2).\r\n\r\nUnder the UDRP Rules (Rule 10(b) and Rule 10(c)), the Panel shall seek to promote procedural (cost and time) efficiency while also ensuring that the parties are treated with equality and that each party is given a fair opportunity to present its case. Furthermore, the Panel is of the opinion that interlocutory\/interim applications sought by parties in UDRP proceedings require panels to apply the balance of convenience test, according to which panels would have a duty to consider who would suffer the greatest inconvenience as a result of the panel’s determination. \r\n\r\nThe Panel has perused paragraph 4.11.2 of the WIPO Jurisprudential Overview 3.0, which lists a whole host of considerations which may assist panels in the determination of whether a consolidation is appropriate. Of particular note, the Panel considers the following factors as most compelling to a finding in favour of the Complainant: (i) the registrants’ identical country of origin (Malaysia) and similar email addresses (@webnic.cc) on record; (ii) the similarities of content and layout of the websites corresponding to most of the disputed domain names; (iii) the fact that the registrants have targeted a specific sector and mark; and (iv) the naming patterns in the disputed domain names being and or .\r\n\r\nOn balance, it would therefore appear to the Panel that the disputed domain names are subject to common control. In addition, the Panel has weighed the balance of convenience and opted to grant the Complainant’s Application for Consolidation. The dismissal would likely to cause the Complainant the greatest burden and interfere with the overall due expedition of the UDRP proceedings. \r\n\r\nIn view of the above, the two registrants\/holders of the disputed domain names are to be treated, for the purpose of this UDRP case, as a single Respondent.\r\n\r\nThe Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "Dr Gustavo Moser" ], "date_of_panel_decision": "2022-09-27 00:00:00", "informal_english_translation": "The Complainant relies upon the following registered trade marks, amongst others:\r\n\r\n• International trade mark registration no. 682095, registered on 31 July 1997, for the word mark DIADORA, in classes 3, 9, 12, 14, 16, 18, 25 and 28 of the Nice Classification;\r\n• EU trade mark registration no. 000339093, registered on 7 January 1999, for the word mark DIADORA, in classes 18, 22 and 25 of the Nice Classification; and\r\n• Italian trade mark registration no. 0001297135, registered on 31 May 2010, for the figurative mark DIADORA, in classes 18, 25 and 28 of the Nice Classification.\r\n\r\n(hereinafter, collectively or individually, “the Complainant’s trade mark”; “the Complainant’s trade mark DIADORA”; or “the trade mark DIADORA” interchangeably).", "decision_domains": { "ZAPATILLASDIADORAOUTLET.COM": "TRANSFERRED", "DIADORAJPSHOES.COM     ": "TRANSFERRED", "DIADORACASALE.COM": "TRANSFERRED", "DIADORATURKIYE.COM": "TRANSFERRED", "DIADORACANADA.COM        ": "TRANSFERRED", "DIADORADANMARK.COM": "TRANSFERRED", "DIADORADEUTSCHLAND.COM": "TRANSFERRED", "DIADORAFRANCE.COM         ": "TRANSFERRED", "CHEAPDIADORACANADA.COM": "TRANSFERRED", "DIADORASKOROUTLET.COM": "TRANSFERRED", "DIADORASCARPEITALIA.COM": "TRANSFERRED", "DIADORA-POLSKA.COM": "TRANSFERRED", "DIADORASALEUK.COM": "TRANSFERRED", "DIADORAMALAYSIA.COM": "TRANSFERRED", "DIADORAPORTUGAL.COM": "TRANSFERRED", "DIADORAFACTORYOUTLET.COM": "TRANSFERRED", "DIADORA-ESPANA.COM": "TRANSFERRED", "DIADORAHUNGARY.COM": "TRANSFERRED", "DIADORAIRELAND.COM": "TRANSFERRED", "DIADORA-PORTUGAL.COM": "TRANSFERRED", "DIADORA-NEDERLAND.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }