Fila Luxembourg SÁRL v Domain Administrator, See PrivacyGuardian.org /

WIPO Case No. D2022-1497

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fila Luxembourg SÁRL v. Domain Administrator, See PrivacyGuardian.org /
Eric Beyer

Case No. D2022-1497

1. The Parties

The Complainant is Fila Luxembourg SÁRL, Luxembourg, represented by Red Points Solutions, S.L., Spain.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Eric Beyer,

Germany.

2. The Domain Name and Registrar

The disputed domain name <filamalaysia.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2022.

On April 27, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 3, 2022.

The Center verified that the Complaint together with the amended 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 of the the due date for Response was June 12, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on June 15, 2022.

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The Center appointed Nayiri Boghossian as the sole panelist in this matter on June 29, 2022. 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 known for sportswear and sports footwear. It was established in 1911 in Italy and expanded its operations internationally over the years. The Complainant uses the trademark FILA with respect to its products. The Complainant owns many trademark registrations for FILA such as:

- International trademark registration No. 448755, registered on October 11, 1979;

- United Kingdom trademark registration No. 00001119098, registered on June 21, 1979.

The disputed domain name was registered on July 5, 2019. According to the evidence submitted by the the Complainant. The Panel independently visited the website on July 11, 2022, and found that it contains

pay-per-click (“PPC”) links to websites which offer sports shoes and fashion related products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is similar to a trademark or service mark in which

the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark in its

entirety followed by the targeted market country, Malaysia, in which the Complainant operates. The addition
of a geographical term is insufficient to prevent a finding of confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized by the Complainant to use its trademark nor is it affiliated with the

Complainant. The use of the Complainant’s trademark together with the term “Malaysia” suggests an

affiliation to the Complainant specific to the Malaysian market, which cannot be considered fair use. The

website of the Respondent displayed the Complainant’s trademark in various places, which was clearly an

attempt to create the impression that it was the official website of the Complainant. The disputed domain name was used to host a website to sell products of the Complainant thus diverting traffic and creating the

misleading impression that it was the Complainant’s official website.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. consumers through misleading them. The Respondent is using a privacy shield. The Respondent knew of

the Complainant’s trademark as it is well known. The website of the Respondent displayed the

Complainant’s trademark and other promotional and commercial pictures, which was clearly an attempt to

create the impression that it was the official website of the Complainant. There was no disclaimer identifying

the website as being unrelated to the Complainant. This was an impersonation of the Complainant’s online

presence. The disputed domain name aims to attract consumers diverting them from the official website of

the Complainant and disrupting its business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for FILA. The Panel is satisfied that the Complainant has established its ownership of the trademark FILA.

The disputed domain name incorporates the Complainant’s trademark FILA in its entirety. The addition of the geographical term “Malaysia” does not eliminate the confusing similarity. It is established by prior UDRP panels that where a complainant’s registered trademark remains recognizable within a domain name, the

incorporation of other terms does not prevent a finding of confusing similarity. WIPO Overview of WIPO

Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The generic Top Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such

is disregarded under the first element confusing similarity test.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the

Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant

asserts that the Respondent is not authorized by the Complainant to use its trademark and has used the show that it has rights or legitimate interests.

confusingly similar disputed domain name to mislead unsuspecting Internet users. Therefore, the

The Complainant has provided evidence that the disputed domain name previously resolved to a webstore

allegedly selling the Complainant’s trademarked goods and displaying the Complainant’s copyrighted images

and logos. Noting the lack of any disclaimer, the disputed domain name’s content exacerbates the initial

interest confusion caused by the incorporation of the Complainant’s trademark in the construction of the

disputed domain name by further impersonating the Complainant. Accordingly, further to section 2.8 of the

WIPO Overview 3.0, the Respondent’s use of the disputed domain name to host an impersonating webstore

does not amount to a bona fide offering nor noncommercial fair use.

Additionally, panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the

complainant’s mark. The Panel, pursuant to paragraph 10(a) of the Rules, independently visited the website

to which the disputed domain name resolves and found that it contains a variety of PPC links to websites
which offer sports shoes by brands such as Nike, Adidas, and Puma, all of which can be considered

competitors of the Complainant in addition to links to websites offering fashion related products. Bearing in

mind that the Complainant’s area of business is sportswear and sports shoes, it is the Panel’s view that the

Respondent is trying to capitalize on the reputation and goodwill of the Complainant’s mark. In Legacy

Health System v. Nijat Hassanov, WIPO Case No. D2008-1708, it was found that the respondent had no

rights or legitimate interests as “the sole purpose of the disputed domain name is to resolve to pay-per-click

advertising websites and collect click-through revenue from advertising links. Such use demonstrates that

the Respondent has used the disputed domain name to derive a commercial benefit. There is no indication

on the website that the Respondent has made a bona fide use of the disputed domain name”.

Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant and cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.

The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the

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disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant’s trademark, as FILA is a well-known trademark.

Additionally, the previous content found at the disputed domain name impersonated the Complainant in an

alleged attempt to offer the Complainant’s trademarked goods. Furthermore, the PPC links leading to online

platforms for the sale of sports goods reinforce such knowledge.

The disputed domain name resolves to a parked page with sponsored links. Such use here constitutes bad

faith use. In Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 the Panel found that “while the

intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is

deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use”.

Similarly, the disputed domain name was previously used to host a webstore impersonating the

Complainant, evidencing the Respondent’s bad faith. Whereas the ability to purchase the goods is not

known to the Panel, the alleged commercial offering and impersonation of the Complainant is sufficient to

establish the Respondent’s bad faith intent to mislead Internet users. Additionally, while the products may

not have been sold, the Respondent could have used the alleged offering as means of collecting personally

identifiable or payment information from Internet users engaging with the disputed domain name.

Such conduct of using a domain name, to attract Internet users for commercial gain, would fall squarely
within the meaning of paragraph 4(b)(iv) of the Policy. Given the above, the Panel believes that the

Respondent has registered and is using the disputed domain name in order to trade off the reputation of the

Complainant’s trademark. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii)

of the Policy.

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 name <filamalaysia.com> be transferred to the Complainant.

/Nayiri Boghossian/

Nayiri Boghossian

Sole Panelist
Date: July 13, 2022