Nike, Inc. v. balata.com ltd
Claim Number: FA0806001211524
Complainant is Nike,
Inc. (“Complainant”), represented by Wendy
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nikeswim.net>, registered with Black Ice Domains, 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 June 23, 2008; the National Arbitration Forum received a hard copy of the Complaint June 23, 2008.
On July 1, 2008, Black Ice Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <nikeswim.net> domain name is registered with Black Ice Domains, Inc., and that Respondent is the current registrant of the name. Black Ice Domains, Inc. verified that Respondent is bound by the Black Ice Domains, 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 8, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 28, 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@nikeswim.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 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 records, 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.
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, <nikeswim.net>, is confusingly similar to Complainant’s NIKE mark.
2. Respondent has no rights to or legitimate interests in the <nikeswim.net> domain name.
3. Respondent registered and used the <nikeswim.net> 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, manufactures, and markets a broad range of athletic footwear and equipment worldwide. Since 1971, Complainant has utilized its NIKE mark (Reg. No. 1,214,930 issued November 2, 1982), which has been registered with the United States Patent and Trademark Office, as well as other governmental trademark authorities worldwide.
Respondent registered the <nikeswim.net> domain name December 27, 2007. Complainant made no allegations before the Panel to suggest how Respondent is using the disputed 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."
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 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 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
The disputed domain name, <nikeswim.net>, incorporates
Complainant’s entire NIKE mark, and adds the generic word “swim,” along with
the generic top-level domain (“gTLD”) “.net.”
The Panel finds that these modifications do not adequately distinguish
the disputed domain name from the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of
a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696
(Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark).
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. Once Complainant does so, Respondent then must meet
the burden of proving its rights or legitimate interests in the disputed domain
name. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also Swedish Match UK Ltd.
v. Admin, Domain, FA 873137
(Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case
has been established by the complainant under Policy ¶ 4(c), the burden then
shifts to the respondent to demonstrate its rights or legitimate interests in
the disputed domain name).
Ordinarily, a
complainant must set forth evidence demonstrating that a respondent is using
the disputed domain name in a way that infringes upon a complainant’s rights in
the disputed domain name. Relative to
the prima facie showing that a respondent lacks rights and legitimate
interests, complainants may submit evidence under Policy ¶¶ 4(c)(i) and (iii)
to demonstrate that a respondent has not made a bona fide offering of
goods or services, or a legitimate noncommercial or fair use, respectively.
In this case,
Complainant failed to allege use or non-use by Respondent relative to the
disputed domain name. Moreover,
Complainant did not offer evidence, such as an Internet screenshot indicating
where the disputed domain name leads, that would support any inference of use
or non-use. Without such information, Complainant
does not satisfy the requirement of making a prima facie showing and the
Panel cannot make appropriate findings for Complainant. Therefore, because Complainant failed to make
any allegations or supply any evidence towards a Policy ¶¶ 4(c)(i) and/or (iii) analysis, the Panel has no choice but to
find that Complainant failed to make its prima facie case under Policy ¶
4(a)(ii). See 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.”); see
also 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).
The Panel finds that Complainant did not satisfy the elements of ICANN Policy ¶ 4(a)(ii).
While Complainant alleged that Respondent registered the
disputed domain name in bad faith, Complainant made no allegation and supplied
no evidence demonstrating Respondent’s use or non-use of the disputed domain
name. Similar to the analysis above for Policy
¶ 4(a)(ii), the Panel must find here as well that
Complainant failed to meet the burden of showing bad faith registration and use
of the disputed domain name. See 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).”); see also 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)).
The Panel finds that Complainant did not 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 18, 2008.
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