Nike, Inc. v. nikerotterdam
Claim Number: FA0804001180664
Complainant is Nike, Inc. (“Complainant”), represented by Wendy
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikerotterdam.com>, registered with Bizcn.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 22, 2008. The Complaint was found to be deficient pursuant to the National Arbitration Forum’s Rule 4.
On May 28, 2008, the National Arbitration Forum granted Complainant’s May 28, 2008, Pre-Commencement Request to Withdraw the Complaint without Prejudice.
The National Arbitration Forum received a hard copy of the Complaint July 2, 2008, submitted in both Chinese and English.
On July 3, 2008, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nikerotterdam.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. verified that Respondent is bound by the Bizcn.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 9, 2008, a Chinese Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 29, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Pursuant to Rule 11(a) the Panel determines that Complainant satisfied the language requirement through the Chinese language Complaint and Commencement Notification and, absent a Response, the Panel determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <nikerotterdam.com>, is confusingly similar to Complainant’s NIKE mark.
2. Respondent has no rights to or legitimate interests in the <nikerotterdam.com> domain name.
3. Respondent registered and used the <nikerotterdam.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nike, Inc., is a sports and fitness company that designs and manufactures a broad range of athletic footwear and equipment worldwide. Complainant has used its NIKE mark since 1971 (Reg. No. 1,214,930 issued November 2, 1982), and registered it with the United States Patent and Trademark Office (“USPTO”), as well as other governmental trademark authorities worldwide.
Respondent registered the <nikerotterdam.com> domain name December 17, 2007. Complainant made no allegations before the Panel as to how the disputed domain name is being used.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 to or legitimate interests relative to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s registration of the NIKE mark with the USPTO confers upon Complainant sufficient rights in the mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
domain name incorporates Complainant’s entire NIKE mark, and adds the
geographical qualifier “
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant must set forth a sufficient prima facie case supporting this assertion before the burden shifts to Respondent to show that Respondent has such rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
To do so, Complainant must bring evidence of Respondents use of the disputed domain name in a way that infringes upon Complainant’s rights. To do so, Complainant may demonstrate by a prima facie showing that the respondent lacks rights and legitimate interests, pursuant to Policy ¶¶ 4(c)(i) and (iii), by alleging that Respondent has not made a bona fide offering of goods or services at the site or that it has not made a legitimate noncommercial or fair use.
Here, Complainant did not make allegations as to Respondent’s use or non-use regarding the disputed domain name. Moreover, Complainant did not offer evidence, such as an Internet screenshot indicating where the disputed domain name leads. Therefore, because Complainant did not make any allegations or supply any evidence towards a Policy ¶¶ 4(c)(i) and/or (iii) finding, the Panel has no choice but to find that Complainant failed to make a prima facie case under Policy ¶ 4(a)(ii). See Claessens Prod. Consultants BV v. Claessens Int’l Ltd., FA 238656 (Nat. Arb. Forum Apr. 23, 2004) (finding that Complainant failed to meet its burden pursuant to Policy ¶ 4(a)(ii) where Complainant neglected to state how Respondent used the disputed domain name in the Complaint); see also O.C. Seacrets, Inc. v. S. TradeWINs, Inc., FA 328042 (Nat. Arb. Forum Oct. 29, 2004) (“Complainant has provided no evidence as to the use of the <jamaicausa.com> domain name and has merely asserted that Respondent has no rights or legitimate interests, which is not sufficient to support a finding that Respondent lacks rights or legitimate interests.”).
The Panel finds that Complainant failed to satisfy the elements of ICANN Policy ¶ 4(a)(ii) by making either allegations or a showing of proof.
Complainant claims that Respondent registered the disputed domain name in bad faith. However, here as well, Complainant offered no evidence demonstrating the use or non-use of the disputed domain name. Therefore, the Panel lacks the necessary showing upon which to make an analysis or findings of bad faith on the merits of the case. As such, the Panel is unable to make a finding regarding bad faith registration and use, and will therefore not make such a finding under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Complainant has not alleged any facts related to Respondent's use of the disputed domain name. The Complaint merely asserts a legal conclusion. Thus, the Panel has no knowledge of Respondent's use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii).”).
The Panel finds that Complainant failed to satisfy the elements of ICANN Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Therefore, the Panel ORDERS that the domain name NOT BE TRANSFERRED.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 19, 2008.
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