Nike, Inc. v. Ren Ting a/k/a Gu Kai a/k/a Lin Li Rong a/k/a Wang Hua c/o Li Mei a/k/a An Quing a/k/a Glen c/o Glen
Claim Number: FA0904001257989
Complainant is Nike,
Inc. (“Complainant”), represented by David
J. Steele of Christie, Parker & Hale LLP, California,
USA. Respondent is Ren Ting a/k/a Gu Kai a/k/a Lin Li Rong a/k/a Wang Hua c/o Li Mei a/k/a An Quing a/k/a Glen c/o Glen (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <nike-fr.com>, <nike-us.com>, <nike-gb.com>, <nike-uk.com> and <nike-au.com>, registered with Xin Net Technology Corporation.
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 April 16, 2009; the National Arbitration Forum received a hard copy of the Complaint April 17, 2009.
On April 17, 2009, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <nike-fr.com>, <nike-us.com>, <nike-gb.com>, <nike-uk.com>, and <nike-au.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation verified that Respondent is bound by the Xin Net Technology Corporation 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 May 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 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 postmaster@nike-fr.com, postmaster@nike-us.com, postmaster@nike-gb.com, postmaster@nike-uk.com and postmaster@nike-au.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <nike-fr.com>, <nike-us.com>, <nike-gb.com>, <nike-uk.com> and <nike-au.com>, are confusingly similar to Complainant’s NIKE mark.
2. Respondent has no rights to or legitimate interests in the <nike-fr.com>, <nike-us.com>, <nike-gb.com>, <nike-uk.com> and <nike-au.com> domain names.
3. Respondent registered and used the <nike-fr.com>, <nike-us.com>, <nike-gb.com>, <nike-uk.com> and <nike-au.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nike, Inc., owns the
famous trademark NIKE, registered with the United States Patent and Trademark
Office (“USPTO”) (i.e., Reg. No. 414,176 issued January 31, 1972) and other
governmental trademark authorities worldwide, including
Respondent registered each of the five disputed domain names between April 2005 and January 2009. Respondent is using the disputed domain names to resolve to Respondent’s commercial websites offering counterfeits of Complainant’s athletic shoes for sale.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i) based on the registration of the NIKE mark with the USPTO and other governmental trademark authorities throughout the world. 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 Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges that Respondent’s disputed domain names
are confusingly similar to its NIKE mark.
Each of the disputed domain names contain Complainant’s NIKE mark in its
entirety with the addition of a hyphen, followed by a two letter country code
and the generic top-level domain “.com.”
The Panel finds that addition of a hyphen and a generic top-level domain
name to Complainant’s NIKE mark fails to sufficiently distinguish the disputed
domain names from Complainant’s mark. See Health Devices Corp. v.
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks all rights and legitimate interests in the disputed domain names. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must present a prima facie case in support of its allegations. The burden then shifts to Respondent to put forth evidence to bring it or themselves within the purview of Policy ¶ 4(c), establishing rights or legitimate interests in the disputed domain names. See 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, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Complainant made a prima facie case. Respondent failed to respond to Complainant’s allegations. From that failure, the Panel may infer that Respondent admits to a lack of any rights or legitimate interests in the disputed domain names. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
However, this Panel evaluates the evidence to determine whether the record shows that Respondent has any rights to or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the
dispute domain names. The WHOIS information
reveals the registrant as “Ren Ting a/k/a Gu Kai a/k/a
Lin Li Rong a/k/a Wang Hua c/o Li Mei a/k/a An Quing a/k/a Glen c/o Glen.” Complainant asserts that no evidence suggests
that Respondent is commonly known by the <nike-fr.com>, <nike-us.com>,
<nike-gb.com>, <nike-uk.com>, and <nike-au.com>
domain names. The Panel finds that
Respondent is not, and has never been, commonly known by the disputed domain
names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the respondent
to register a domain name containing its registered mark); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
The disputed domain
names each resolve to various commercial websites offering counterfeit versions
of Complainant’s goods for sale. The
Panel finds that such use does not constitute a bona fide offering of
goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v.
Inversiones HP Milenium
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and used the disputed domain names, <nike-fr.com>, <nike-us.com>, <nike-gb.com>, <nike-uk.com> and <nike-au.com>, in bad faith pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent’s use of the disputed domain names likely disrupts Complainant’s business and therefore, Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent also has created a likelihood of confusion as to Complainant’s endorsement of the disputed domain names by attracting Internet users through the confusingly similar <nike-fr.com>, <nike-us.com>, <nike-gb.com>, <nike-uk.com> and <nike-au.com> domain names for commercial gain. The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
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 <nike-fr.com>, <nike-us.com>, <nike-gb.com>, <nike-uk.com> and <nike-au.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 15, 2009.
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