Nike, Inc. v. Domain Administrator a/k/a M C
Claim Number: FA0811001233377
Complainant is Nike,
Inc. (“Complainant”), represented by David
J. Steele, of Christie, Parker & Hale, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nikeairforceone.com> and <nikeairforceone.biz>, registered with Moniker Online Services, Inc. and Godaddy.com, Inc, respectively.
The undersigned certifies that he has acted independently and impartially and to the best of knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nikeairforceone.com> and <nikeairforceone.biz> domain names are confusingly similar to Complainant’s NIKE and AIR FORCE I marks.
2. Respondent does not have any rights or legitimate interests in the <nikeairforceone.com> and <nikeairforceone.biz> domain names.
3. Respondent registered and used the <nikeairforceone.com> and <nikeairforceone.biz> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nike, Inc., has used
the NIKE mark since 1971 in connection with its athletic shoe business. In 1982, Complainant first released its AIR
FORCE I (pronounced “air force one”) line of basketball sneakers. Complainant registered the NIKE mark (Reg.
No. 978,952) with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <nikeairforceone.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.
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.
Complainant must first establish that it has rights to the
marks included in the disputed domain names.
Complainant’s registration of the NIKE mark with the USPTO establishes
its rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Under Policy ¶ 4(a)(i) registration
of a trademark is not necessary to establish that Complainant has rights in the
mark. See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the Policy);
Complainant has used the AIR FORCE I mark continuously since
1982. Complainant’s AIR FORCE I
basketball shoes have become famous, as evidenced by websites dedicated to shoe
collections and the 2002 Nelly song “Air Force Ones.” Further, Complainant registered the mark with
the USPTO in 2008, which provides evidence that the mark is distinctive and has
taken on a secondary meaning. The Panel
finds that Complainant has established rights in the AIR FORCE I mark pursuant
to Policy ¶ 4(a)(i).
See Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO
The disputed domain names incorporate Complainant’s NIKE
mark in its entirety, spells out the Roman numeral “I” in Complainant’s AIR
FORCE I mark, and adds the generic top-level domains
(“gTLD”) “.com” or “.biz.” The addition
of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii)
is on Complainant to prove that Respondent does not have any rights or
legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden shifts to
Respondent to show that it does have rights or legitimate interests
pursuant Policy ¶ 4(c). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the disputed
domain names. Complainant asserts
that Respondent has no license or agreement with Complainant authorizing
Respondent to use either the NIKE or AIR FORCE I marks, and the WHOIS
information identifies Respondent as “Domain Administrator a/k/a M C.” Thus, Respondent has not established rights
or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the disputed domain names to link to third-party websites that provide discounts on
Complainant’s shoes. Respondent’s use of
a domain name that is confusingly similar to Complainant’s NIKE and AIR
FORCE I marks to redirect Internet users interested
in Complainant’s business to competing websites is not a use in connection with
a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA
132439 (Nat. Arb. Forum
Respondent’s general offer to sell the <nikeairforceone.com> and <nikeairforceone.biz>
domain names is evidence that
Respondent lacks rights and legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii).
See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain names were posted on the website
resolving from the <auctions.godaddy.com> domain name. The starting bid for the <nikeairforceone.com> domain name is $49,000. The starting bid for the <nikeairforceone.biz>
domain name is $40,000. The Panel finds
that posting the domain names for sale on the auction site is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(i), as it is evidence of
Respondent’s primary intention to sell the disputed domain names. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
Respondent’s use of
Complainant’s NIKE and AIR FORCE I marks in the disputed domain names to redirect Internet users to competing websites suggests that
Respondent registered the disputed domain names intending to disrupt
Complainant’s business. The Panel finds
that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party websites. Because
Respondent’s domain names are confusingly similar to Complainant’s NIKE
and AIR FORCE I marks, Internet users
accessing Respondent’s disputed domain names may become confused as to
Complainant’s affiliation with the resulting websites. Thus, Respondent’s registration and use of
the <nikeairforceone.com> and <nikeairforceone.biz> domain names constitutes bad faith pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <nikeairforceone.com> and <nikeairforceone.biz> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 25, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum