Nike, Inc. v. Khoo Lye
Claim Number: FA0110000100180
Complainant is Nike, Inc., Beaverton, OR ("Complainant"). Respondent is Khoo Lye, Kuala Lumpur, Malaysia ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <niketown.net>, registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 1, 2001; the Forum received a hard copy of the Complaint on October 1, 2001.
On October 2, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <niketown.net> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <niketown.net> domain name is confusingly similar to Complainant's NIKE TOWN and NIKE marks.
Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name has been registered and used in bad faith.
Respondent failed to submit a Response.
Since 1971, Complainant has used and promoted the NIKE trademark worldwide in connection with footwear, apparel, equipment and retail store services, web-based information services, and informational services. Complainant's NIKE mark is widely recognized as indicating goods and services emanating from Complainant and is famous worldwide. Complainant owns numerous trademark registrations worldwide for its famous NIKE mark.
Complainant operates retail stores to sell its goods. Currently there are thirteen stores on two continents bearing the NIKE TOWN trademark. The NIKE TOWN trademark is registered in fifteen countries including U.S. Trademark Registrations No. 1,775,629 and No. 1.796,122. Complainant's stores are located in prominent locations such as New York, London, Berlin, Los Angeles, Honolulu, Chicago, Seattle and Miami. Since 1990, Complainant has used the NIKE TOWN mark as both a service mark for retail store services and a trademark for clothing and bags. Complainant has devoted substantial resources into promoting the NIKE TOWN mark and it is widely recognized as indicating Complainant's goods and services.
Respondent registered the disputed <niketown.net> domain name on March 1, 2000. Respondent is not using the domain name in connection with any business. Respondent has not developed a website at the domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant, through registration and extensive use has established that it has rights in the NIKE and NIKE TOWN marks. Furthermore, Respondent's domain name <niketown.net> is identical to Complainant's NIKE TOWN mark because the domain name incorporates the entirety of Complainant's mark and merely adds a top-level indicator. It has been found that the addition of a top-level indicator such as "com" or "net" does not create a new distinct mark. See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <niketown.net> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <niketown.net> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent has held the disputed domain name for over a year and has yet to develop a website. This behavior is evidence that Respondent is engaged in passive holding of the domain name. It has been found that the mere registration of a domain name is not enough to create rights and legitimate interests. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).
Furthermore, based on the fame of Complainant's NIKE mark, even if Respondent had been actively using the domain name for bona fide goods and/or services, or a legitimate noncommercial or fair use, it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name. Any use by Respondent of the <niketown.net> domain name, identical to Complainant's famous mark, would be an opportunistic attempt to attract customer's via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <niketown.net> domain name is identical to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the confusingly similar <niketown.net> domain name is evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant").
Furthermore, because of the famous and distinctive nature of Complainant's NIKE mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <niketown.net> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
Respondent's registration and passive holding of the <niketown.net> domain name supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <niketown.net> be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY ( Ret.)
Dated: November 16, 2001
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