Nike, Inc v. James Hughes
Claim Number: FA0804001180672
PARTIES
Complainant is Nike, Inc. (“Complainant”), represented by Wendy Chan, of Nike, Inc., Oregon, USA. Respondent is James Hughes (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nikegiftcard.com>,
<nikegiftcard.tv>, <nikegiftcard.org>,
<nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info>. The <nikegiftcard.com>
domain name was registered with Godaddy.com, Inc. The <nikegiftcard.tv>, <nikegiftcard.org>,
<nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info> domain names
were registered with Network Solutions,
Inc.
PANEL
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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 23, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 23, 2008.
On April 23, 2008, Godaddy.com,
Inc., confirmed
by e-mail to the National Arbitration Forum that the <nikegiftcard.com> domain
name is registered with Godaddy.com, Inc.
and that Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 April 23, 2008, Network Solutions, Inc., confirmed by e-mail to
the National Arbitration Forum that the <nikegiftcard.tv>, <nikegiftcard.org>,
<nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info>
domain names are registered with Network
Solutions, Inc. and that Respondent is the current registrant of the
name. Network
Solutions, Inc., has verified that Respondent is bound by the Network Solutions, Inc., 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 April 28, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 1, 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@nikegiftcard.com, postmaster@nikegiftcard.tv, postmaster@nikegiftcard.org, postmaster@nikegiftcard.net, postmaster@nikegiftcard.mobi and postmaster@nikegiftcard.info by e-mail.
A Response was received late by hard copy and thus the Response was
deemed deficient pursuant to ICANN Rule 5 because the hard copy was not
received by the response deadline.
On May 8, 2008, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Nike alleges that it designs, manufactures and markets athletic footwear, apparel, and equipment. Nike asserts that it has used the mark NIKE in connection with the marketing of its services since approximately 1971. Nike holds federal trademark registrations for its mark.
Nike contends that the disputed domain names <nikegiftcard.com>,
<nikegiftcard.tv>, <nikegiftcard.org>,
<nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info> consist of
the NIKE mark in conjunction with additional generic terms. As a result, Nike contends consumers are
likely to be confused and to believe that Respondent and his activities and
websites are connected to or affiliated with Complainant in some way. Complainant contends that the disputed domain
names are confusingly similar because they are identical in material part to
Complainant’s NIKE mark. Complainant
also contends that Respondent is not commonly known by the NIKE mark or the
disputed domain names and thus has no rights or legitimate interests in
them. Moreover, Complainant contends
that Respondent registered and is using the disputed domain names in bad
faith. Complainant contends that
Respondent had knowledge of Nike’s trademark rights and necessarily had actual
knowledge of those rights at the time he registered the disputed domain
names. Complainant asserts that
Respondent has not made legitimate use of the domain names but, instead, has
offered them for sale.
B. Respondent
Respondent’s response is that he had already decided to transfer the
disputed domain names to Complainant “and accept their offer to reimburse” his
expenses. He asserts that Complainant
failed to provide him with the documentation to complete the transfer. He contends that the domain name <nikegiftcard.com> was already in existence and purchased by him as an
expired domain name at auction. He
expressed interest in knowing whether Complainant sought transfer of the
disputed domain name from the previous owner.
When asked by the Panel to clarify his position concerning the domain
names, Respondent responded as follows:
I am in agreement to transfer of all 6 domain names provided that I am not responsible for any expenses associated with this arbitration, I am not responsible for any expenses involved with the transfers, and, I am reimbursed for any and all expenses, including domain auction fees, associated with the creation and acquisition of said domain names.
FINDINGS
Complainant has provided evidence of its
registration of the NIKE mark and of its continuous use of the marks since
approximately 1971. The disputed domain
names fully incorporate Complainant’s NIKE mark with additional generic words
and the generic top-level domains.
Respondent does not assert that he has a right or legitimate interest in
the disputed domain names, although he states that he purchased the disputed
domain name <nikegiftcard.com> at a
domain auction. Respondent has not
responded to Complainant’s allegation that he registered and used the domain
names in bad faith except to offer to transfer all six of the disputed domain
names to Complainant provided that he is not responsible for any expenses
associated with the arbitration, or for any expenses involved with the
transfers and is reimbursed for any expenses, including domain auction fees,
that he incurred in creation or acquisitioin of the domain names.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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.
Respondent’s Response was deficient because he did not timely file a hard copy of his Response. The Panel concludes that this technical breach should be overlooked in order that the dispute can be decided on the merits. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003).
Respondent
expressed willingness to transfer the disputed domain names but set conditions
on the transfer. This may be a
sufficient basis for the Panel to forego traditional analysis and order the
immediate transfer of the disputed domain names. See Boehringer Ingelheim Int’l GmbH v.
Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9,
2003). The problem here, however, is
that Respondent’s offer is conditional.
Because the offer is conditional, the Panel will address the merits of
the Complaint under traditional analysis.
Complainant has provided evidence of its
registration of its NIKE mark in 1974 with the United States Patent and
Trademark Office. The record also shows
Complainant’s continuous use of the mark in marketing its services. Complainant has established its rights in the
mark. Respondent did not respond to
Complainant’s allegation that his use of the mark in the disputed domain names
is confusingly similar. No doubt exists
of the confusing similarity. The
disputed domain names fully incorporate Complainant’s NIKE mark with additional
generic words and generic top-level domains.
See Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23,
2001).
No evidence exists that Respondent is
commonly known by the disputed domain names or that he has in fact made any
legitimate use of them. No doubt exists
under the record that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum Feb. 10, 2003).
Respondent’s conditional offer to transfer
the disputed domain names to Complainant without any explanation or response
concerning his registration and use of the disputed domain names gives credence
to Complainant’s allegation that Respondent registered and holds the disputed domain
names in bad faith. The Panel believes
that Respondent registered the disputed domain names and acquired the <nikegiftcard.com> domain name in the hope of profiting from
Complainant’s goodwill associated with its NIKE mark. Respondent thus registered and used the disputed
domain names in bad faith within the meaning of Police ¶4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003).
DECISION
Because Complainant established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikegiftcard.com>, <nikegiftcard.tv>,
<nikegiftcard.org>, <nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info> domain
names be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: June 3, 2008
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