Nike, Inc. v. BaseballEquipment.com
Claim Number: FA0803001159815
Complainant is Nike, Inc. (“Complainant”), represented by Margo
Fowler,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nikebags.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 2008 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 postmaster@nikebags.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <nikebags.com> domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nikebags.com> domain name.
3. Respondent registered and used the <nikebags.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nike Inc., is a world leader in sports and
fitness products. Complainant designs,
manufactures and markets a broad range of athletic and leisure footwear,
apparel and equipment. Complainant owns
several trademarks worldwide, including a number with the United States Patent
and Trademark Office (“USPTO”) (i.e. Reg. No. 978952 issued
Respondent registered the <nikebags.com>
domain name
on
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that through registration with the USPTO,
Complainant has established rights in the NIKE mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Complainant contends that Respondent’s <nikebags.com> domain name is confusingly similar to Complainant’s
NIKE mark. Respondent’s disputed domain
name contains Complainant’s mark in its entirety, adds a generic term
associated with Complainant’s business and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds that a
disputed domain name which contains a complainant’s mark and adds a generic
term associated with the complainant’s business is confusingly similar pursuant
to Policy ¶ 4(a)(i). See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brambles
Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000)
(finding that the domain name <bramblesequipment.com> is confusingly
similar because the combination of the two words "brambles" and
"equipment" in the domain name implies that there is an association
with the complainant’s business). In
addition, the Panel finds that the addition of the gTLD “.com,” is insufficient
in creating a distinct disputed domain name.
See Busy Body, Inc. v.
Fitness Outlet Inc., D2000-0127 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights or
legitimate interests in the <nikebags.com>
domain name. Complainant must first
present a prima facie case
establishing that Respondent lacks rights and legitimate interests in the
disputed domain name. Once Complainant
has met the burden and made a prima facie
case supporting the assertion that Respondent lacks rights and legitimate
interests, the burden shifts to Respondent to show that it does have rights or
legitimate interests in the disputed domain name. The Panel finds that Complainant has
demonstrated that Respondent lacks rights and legitimate interests, and thus
has made a prima facie case pursuant
to Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
The Panel presumes that Respondent lacks rights and legitimate interests because Respondent failed to answer the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent has not been and is not
commonly known by the disputed domain name, and is not currently authorized to
use the NIKE mark. Additionally, the
WHOIS information identifies Respondent as “Jaime Hill, BaseballEquipment.com”,
and therefore, gives no indication that Respondent has been or is commonly
known by the <nikebags.com>
domain name. Therefore, the Panel
concludes that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Complainant states that Respondent is using the confusingly similar disputed domain name to lead Internet users to mistakenly believe they have the opportunity to obtain merchandise from Nike. The Panel finds that intentionally diverting Internet users to a website offering Complainant’s products is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is using the <nikebags.com>
domain name
to offer Complainant’s products for sale without Complainant’s
authorization. This constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D.
Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb.
Forum
Respondent is using the <nikebags.com>
domain name
in order to intentionally attract Internet users to its website by using a
confusingly similar domain name, then offering Complainant’s products. The Panel finds that this type of activity
qualifies as bad faith registration and use under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant); see
also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO
May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services
without Complainant's authority . . . is bad faith use of a confusingly similar
domain name.”).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <nikebags.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 16, 2008
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