Nike, Inc. v. Rocky Parrish
Claim Number: FA0805001191347
Complainant is Nike, Inc. (“Complainant”), represented by Wendy
Chan, of Nike, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nike-bb.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 19, 2008.
On May 16, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nike-bb.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").
20, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 9, 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 June 12, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant 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 has registered with the United States Patent and Trademark Office (“USPTO”) numerous marks in the NIKE family of marks, including Reg. No. 978,952, issued November 2, 1982.
Respondent registered the <nike-bb.com> domain name on November 2, 2007.
Respondent’s <nike-bb.com> domain name is confusingly similar to Complainant’s NIKE mark.
Respondent is not commonly known by the NIKE mark or the disputed domain name, and Respondent has not acquired any trademark rights in the NIKE mark.
Respondent does not have any rights to or legitimate interests in the <nike-bb.com> domain name.
Because of the fame of the NIKE mark, Respondent necessarily had actual knowledge of Nike’s rights in its mark, and, in any event, Respondent had constructive notice as a matter of law of Nike’s trademark rights in the NIKE Mark when Respondent registered the disputed domain name.
Respondent registered and uses the <nike-bb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Through registration with the USPTO, Complainant has established rights in the NIKE mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):
Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).
See also Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that a complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <nike-bb.com> domain name is confusingly similar to Complainant’s NIKE trademark. We agree. Respondent’s domain name contains Complainant’s mark in its entirety, and merely adds a hyphen followed by the two letters “bb.” Additionally, Respondent adds the generic top-level domain (“gTLD”) “.com.” A domain name which contains a complainant’s entire mark and merely adds a hyphen, two letters, and a gTLD is confusingly similar pursuant to Policy ¶ 4(a)(i). See, for example, Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
See also Arthur Guinness Son & Co. (
[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .
Therefore, we conclude that, pursuant to Policy ¶ 4(a)(i), the <nike-bb.com> domain name is confusingly similar to Complainant’s NIKE mark.
Under Policy ¶ 4(a)(ii), Complainant must show that Respondent has no rights to or legitimate interests in the <nike-bb.com> domain name. This requirement is met if Complainant presents a prima facie case establishing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has met this burden, the burden shifts to Respondent to show that it nonetheless does have such rights or interests. Its failure to do so permits us to conclude that Complainant has prevailed under this heading of the Policy. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
[b]ecause Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a disputed domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
We should also mention that, in assessing the issue of bad faith registration and use of the contested domain name, we are not unmindful of the fact that the allegations of the Complaint do not include an assertion that Respondent either has made, or intends to make, any particular use of the disputed domain name. The question effectively reduces to this: Is it possible to say, in the language of Policy ¶ 4(a)(iii), that Respondent’s “domain name has been registered and is being used in bad faith” if it has not used the domain name at all. The answer is yes. The reason is that the language of the Policy must be understood to mean that “being used in bad faith” is to be “acting in bad faith with regard to the domain name.” This construction derives from the fact that the first three circumstances listed in ¶ 4(b) of the Policy, which is devoted to an examination of circumstances possibly bearing on the question of bad faith registration and use, describe a respondent’s intentions at the time of registration rather than active or actual use, while only the fourth circumstance (¶ 4(b)(iv)) requires actual use of the domain name. On the point, see, for example, Argyle Diamond Sales Limited v. Van Daaz, D2001-1323 (WIPO Dec. 31, 2001). See also Sony Kabushiki Kaisha v. sony.net, D2000-1074 (WIPO Nov. 28, 2000):
In the view of the Panel, while inaction should never of itself constitute evidence of registration and use in bad faith, inaction may do so where the Domain Name comprises a name which can only sensibly refer to the Complainant, where there is no obvious possible justification for the selection of the Domain Name, where the Respondent has not sought to put before the Panel any credible justification for selection of the Domain Name, and where it is difficult to conceive of any use of the Domain Name which would not be likely to cause confusion of some kind.
On the facts before us, we conclude that the instant case closely resembles the latter decision. Thus Respondent’s use of Complainant’s entire famous mark and its failure to employ the contested domain in any way, coupled with its failure to respond to the Complaint and the absence of any colorable justification for Respondent’s selection of the subject domain, persuades us that Respondent has indeed both registered and used the domain in bad faith as contemplated in Policy 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <nike-bb.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 26, 2008
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