Nike, Inc. v. Whois Agent c/o Whois Privacy Protection
Claim Number: FA0904001257814
Complainant is Nike, Inc. (“Complainant”), represented by David
J. Steele of Christie, Parker & Hale, LLP,
California, USA. Respondent is Whois Agent c/o Whois
Privacy Protection (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikeshop.com>, registered with XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP.
The undersigned certifies that she 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 15, 2009; the National Arbitration Forum received a hard copy of the Complaint April 16, 2009.
On April 15, 2009, XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP confirmed by e-mail to the National Arbitration Forum that the <nikeshop.com> domain name is registered with XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP and that Respondent is the current registrant of the name. XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP verified that Respondent is bound by the XIAMEN ENAME NETWORK TECHNOLOGY CORPORATION LIMITED d/b/a ENAME CORP 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").
20, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 11, 2009,
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 May 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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. Respondent’s <nikeshop.com> domain name is identical to Complainant’s NIKE SHOP mark.
2. Respondent has no rights to or legitimate interests in the <nikeshop.com> domain name.
3. Respondent registered and used the <nikeshop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant advertises and sells a broad range of athletic footwear, apparel and equipment under the NIKE SHOP mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on April 6, 1999 (Reg. No. 2,237,132). Complainant operates in at least 160 countries around the world.
Respondent registered the <nikeshop.com> domain name November 14, 2001. Based on the evidence presented by Complainant, it appears that the disputed domain name resolves to a website that features links to websites of Complainant’s competitors.
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 to 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 established rights in the
NIKE SHOP mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that Respondent’s <nikeshop.com> domain name is identical to Complainant’s NIKE SHOP mark. The <nikeshop.com> domain name differs from Complainant’s mark in two ways: (1) the space between the words has been removed; and (2) the generic top-level domain (gTLD) “.com” has been added to the mark. The Panel finds that removing spaces from a mark does not sufficiently distinguish a domain name from that mark for the purposes of Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark). The Panel also finds that the addition of a gTLD is also inconsequential when considering whether a domain name is identical to a mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[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 . . . ."); see also SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Therefore, the Panel finds that despite these changes, the disputed domain name remains identical to Complainant’s NIKE SHOP mark, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <nikeshop.com> domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant contends that Respondent is not commonly known
by the <nikeshop.com> domain
name and that Respondent has not ever been the owner or licensee of the NIKE
SHOP mark. The WHOIS record for the
disputed domain name lists Respondent as “Whois
Agent c/o Whois Privacy Protection.”
Also, Respondent has failed to show any evidence contrary to
Complainant’s contentions that Respondent is not commonly known by the <nikeshop.com> domain name. Because no evidence suggests that Respondent
has ever been known by any variant on the NIKE SHOP mark, the Panel finds that
Respondent is not commonly known by the <nikeshop.com>
domain name pursuant to
Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also
Respondent is using the <nikeshop.com> domain name to host a website that features links to third-party websites that are selling products that are similar to those sold by Complainant. Complainant contends that Respondent receives “click-through” fees from those third-party websites, and therefore is commercially benefitting from the use of the disputed domain name. The Panel finds that this use by Respondent of the <nikeshop.com> domain name is neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was 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 pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The <nikeshop.com> domain name is directing Internet customers to Respondent’s website that resolves from the disputed domain name. Complainant contends that Respondent is intentionally disrupting Complainant’s business by further diverting confused customers to third-party websites that sell products in the same market as Complainant. The Panel finds that Respondent is disrupting Complainant’s business, and therefore, that Respondent’s registration and use of the disputed domain name is in bad faith pursuant to Policy ¶ 4(b)(iii). See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where the respondent and the complainant both operated in the highly regulated field of radio broadcasting and the respondent registered a domain name incorporating the complainant’s call letters); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent is gaining
commercially from this diversion, through the click-through fees that
Respondent is receiving from the third-party websites. In the Panel’s judgment, Respondent is
intentionally using the disputed domain name for commercial gain by creating a
likelihood of confusion with Complainant’s mark, and, pursuant to Policy ¶
4(b)(iv), the Panel finds that this use is also evidence of Respondent’s
registration and use of the <nikeshop.com>
domain name in bad faith.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikeshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 28, 2009.
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