{ "case_number": "CAC-UDRP-106220", "time_of_filling": "2024-02-07 09:49:55", "domain_names": [ "diadoraargentina-outlet.com", "diadoracostarica.com", "diadora-japan.com", "diadora-schweiz.com", "diadora-slovenija.com", "diadora-uae.com", "diadoraitalian.com", "diadoraoutletperu.com", "diadora-srbija.com", "diadoraargentinastore.com" ], "case_administrator": "Olga Dvořáková (Case admin)", "complainant": [ "Diadora S.p.A." ], "complainant_representative": "Convey srl", "respondent": [ "Client Care (Web Commerce Communications Limited)" ], "respondent_representative": null, "factual_background": "

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:<\/strong><\/p>\n

Key aspects of the Complainant’s contentions are summarized below.<\/strong><\/p>\n

Complainant’s Background<\/strong><\/p>\n

The Complainant is an Italian athletic footwear and apparel manufacturer that was established in 1948 by Marcello Danieli, who named the company \"Diadora\" based on the Greek phrase \"dia dora,\" meaning \"by means of gifts.\" Initially known for mountain climbing boots, the  Complainant expanded its DIADORA product line to include ski boots, running shoes, tennis shoes, and football boots, collaborating with renowned athletes. In 2009, DIADORA was acquired by Mario Moretti Polegato, founder of Geox, leading to a collaboration aimed at creating comfortable and technologically advanced work shoes. The Complainant’s DIADORA products have also been featured in major sports events, including the Roland-Garros tennis championship and the 2016 Olympic Games in Rio de Janeiro.<\/p>\n

Registration of the disputed domain names<\/strong><\/p>\n

According to the Complainant, the disputed domain names <diadoraargentina-outlet.com<\/span>>, <diadoracostarica.com<\/span>>, <diadora-japan.com<\/span>>, <diadora-slovenija.com<\/span>>, <diadora-uae.com<\/span>>, <diadoraitalian.com<\/span>>,<diadoraoutletperu.com<\/span>>,<diadora-srbija.com<\/span>> were registered on June 29, 2023, <diadora-schweiz.com<\/span>> was registered on March 24, 2023 and <diadoraargentinastore.com<\/span>> was registered on May 25, 2023.<\/p>\n

First UDRP Element - disputed domain name is Confusingly Similar to the Complainant’s Trademark<\/strong><\/p>\n

The Complainant asserts that the disputed domain names are confusingly similar to its trademark DIADORA by incorporating the entire trademark DIADORA, along with generic commercial and geographical terms. The addition of geographical terms may exacerbate confusion among Internet users, given DIADORA's international recognition and the Complainant's global presence. The combination of DIADORA with generic and geographical terms could suggest improperly to consumers that the disputed domain names and corresponding web sites might be directly controlled or authorized by the Complainant.<\/p>\n

Furthermore, the Complainant contends that the addition of the gTLD “.COM” is merely instrumental to the use in Internet and <\/span>does not affect the confusing similarity of the disputed domain names t<\/span> to the Complainant’s trademark.<\/p>\n

Second UDRP Element – The Respondent has no Rights or Legitimate Interests in the disputed domain names<\/strong><\/p>\n

The Complainant asserts that the Respondent is not known as the disputed domain names.<\/p>\n

Further, the Respondent is not a licensee, authorized agent, or related in any way to the Complainant, nor is authorized in any way to use the Complainant’s trademarks or to register or use the disputed domain names.<\/p>\n

The Complainant claims there is no evidence of demonstrable preparations to use nor actual use of the disputed domain names in connection with a bona fide offering of goods or services. Rather, the disputed domain names currently have inactive content, although they previously resolved to websites, all with similar layouts, where the Complainant’s trademarks DIADORA were published.  Such wilful conduct demonstrates the Respondent did not intend to use the disputed domain names in connection with any legitimate purpose. The Complainant also claims that the Respondent is not commonly known by the disputed domain names as an individual, business, or other organization and their family names do not correspond to DIADORA or the disputed domain names.<\/p>\n

Third UDRP Element – The disputed domain names were Registered and are Being Used in Bad Faith<\/strong><\/p>\n

The Complainant asserts that its DIADORA<\/span> trademark has become a well-known trademark in the sector of manufacturing footwear,<\/span> and that a past domain name dispute panel has confirmed the notoriety of the trademark DIADORA<\/span>. Furthermore, the actual knowledge of the DIADORA trademark by Respondent at the time of the registration of the disputed domain names is demonstrated by the Respondent’s use thereof in connection with the promotion of the Complainant‘s trademark and products, prior to the Complainant‘s cease and desist letter to the Respondent.<\/span><\/p>\n

Considering the trademark’s distinctiveness and well-known character, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s DIADORA trademark at the time of the registration of the disputed domain names, with which they are confusingly similar.<\/span><\/p>\n

By registering the disputed domain names at issue, confusingly similar to the trademark DIADORA, the Respondent has been engaged in a pattern of conduct preventing the Complainant from reflecting the mark in corresponding domain names. Further, the Respondent has targeted the Complainant through the registration of ten domain names including the trademark DIADORA.<\/span><\/p>\n

The Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional circumstance of bad faith. <\/span><\/p>\n

Although the disputed domain names do not currently resolve to active content, the passive holding doctrine - which finds that a domain name registrant can act in bad faith absent active use of a domain name as described in WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows – applies because the trademark DIADORA is widely known and, in light of its use, has become well-known worldwide. The disputed domain names at issue are registered without indication of the actual holder and the Respondent has not replied to the cease and desist letter and they have not revealed their identity following the receipt thereof. In light of the above, it is impossible to conceive of any plausible active use of all the disputed domain names by the Respondent.<\/p>\n

The above summarized facts and arguments asserted by the Complainant are not contested by the Respondent because no Response was filed.<\/p>", "other_legal_proceedings": "

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.<\/p>", "no_response_filed": "

The Complainant´s contentions are summarised above.<\/p>\n

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.<\/p>", "rights": "

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).<\/p>", "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 Policy).<\/p>", "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 Policy).<\/p>", "procedural_factors": "

The 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.<\/p>", "decision": "Accepted", "panelists": [ "Claire Kowarsky" ], "date_of_panel_decision": "2024-03-14 00:00:00", "informal_english_translation": "

The Complainant relies on its registered trademarks:<\/p>\n\n\n\n\n\n\n\n\n
\n

Mark<\/p>\n<\/td>\n

\n

Territory<\/p>\n<\/td>\n

\n

Registration No.<\/p>\n<\/td>\n

\n

Application Date<\/p>\n<\/td>\n

\n

Registration Date<\/p>\n<\/td>\n

\n

Classes<\/p>\n<\/td>\n<\/tr>\n

\n

DIADORA<\/span><\/p>\n

 <\/span><\/p>\n<\/td>\n

\n

WIPO<\/span><\/p>\n

Designations: <\/span><\/p>\n

CN <\/span><\/p>\n

 <\/span><\/p>\n

 <\/span><\/p>\n

 <\/span><\/p>\n<\/td>\n

\n

682095A<\/span><\/p>\n<\/td>\n

\n

July 31, 1997 <\/span><\/p>\n

 <\/span><\/p>\n

 <\/span><\/p>\n<\/td>\n

\n

July 31, 1997 <\/span><\/p>\n<\/td>\n

\n

3, 9, 12, 14, 16, 18, 25, 28<\/span><\/p>\n<\/td>\n<\/tr>\n

\n

DIADORA<\/span><\/p>\n<\/td>\n

\n

WIPO<\/span><\/p>\n

Designations: <\/span><\/p>\n

FI, GB, GR, LT, UZ, AL, AM, AT, AZ, BA, BG, BX, BY, CH, CU, CZ, DE, DZ, EG, ES, FR, HR, HU, KG, KP, KZ, LI, LR, LS, LV, MA, MC, MD, ME, MK, MN, MZ, PL, PT, RO, RS, RU, SD, SI, SK, SM, SZ, TJ, UA, VN<\/span><\/p>\n<\/td>\n

\n

682095<\/span><\/p>\n<\/td>\n

\n

July 31, 1997<\/span><\/p>\n<\/td>\n

\n

July 31, 1997<\/span><\/p>\n<\/td>\n

\n

3, 9, 12, 14, 16, 18, 25, 28<\/span><\/p>\n<\/td>\n<\/tr>\n

\n

DIADORA<\/span><\/p>\n<\/td>\n

\n

EM<\/span><\/p>\n<\/td>\n

\n

000339093<\/span><\/p>\n<\/td>\n

\n

July 15, 1996<\/span><\/p>\n<\/td>\n

\n

January 7, 1999<\/span><\/p>\n<\/td>\n

\n

18, 25, 28<\/span><\/p>\n<\/td>\n<\/tr>\n

\n

DIADORA MARCHIO FIGURATIVO<\/span><\/p>\n

 <\/span><\/p>\n<\/td>\n

\n

IT<\/span><\/p>\n<\/td>\n

\n

0001297135<\/span><\/p>\n<\/td>\n

\n

February 5, 2008<\/span><\/p>\n<\/td>\n

\n

May 31, 2010<\/span><\/p>\n<\/td>\n

\n

18, 25, 28<\/span><\/p>\n<\/td>\n<\/tr>\n

\n

DIADORA<\/span><\/p>\n<\/td>\n

\n

US<\/span><\/p>\n<\/td>\n

\n

2282558<\/span><\/p>\n<\/td>\n

\n

Sep. 25, 1997<\/span><\/p>\n<\/td>\n

\n

Oct. 05, 1999<\/span><\/p>\n<\/td>\n

\n

18, 25, 28<\/span><\/p>\n<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n

 Further, the Complainant operates its business using its domain names <diadora.com<\/span>>, registered since October 01, 1998 and <\/span><diadora.cn<\/span>>, registered since May 21, 2014.   <\/span><\/p>", "decision_domains": { "diadoraargentina-outlet.com": "TRANSFERRED", "diadoracostarica.com": "TRANSFERRED", "diadora-japan.com": "TRANSFERRED", "diadora-schweiz.com": "TRANSFERRED", "diadora-slovenija.com": "TRANSFERRED", "diadora-uae.com": "TRANSFERRED", "diadoraitalian.com": "TRANSFERRED", "diadoraoutletperu.com": "TRANSFERRED", "diadora-srbija.com": "TRANSFERRED", "diadoraargentinastore.com": "TRANSFERRED" }, "panelist": null, "panellists_text": null }