Nike, Inc. v. Fang Wei c/o Fang Wei a/k/a Liu Wen c/o Liu Wen a/k/a Cathy Pearce c/o Cathy Pearce a/k/a Hai Mingwe c/o Hai Mingwe
Claim Number: FA0907001272458
Complainant is Nike,
Inc. (“Complainant”), represented by Anne
F. Bradley, of Christie, Parker & Hale LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <nikefactorystore.biz>, <stocknike.com>, <nikeshoesupplier.com>, and <nikeshoes-store.com>, registered with Key-Systems GmbH d/b/a domaindiscount24.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 8, 2009.
On July 10, 2009, Key-Systems GmbH d/b/a domaindiscount24.com confirmed by e-mail to the National Arbitration Forum that the <nikefactorystore.biz>, <stocknike.com>, <nikeshoesupplier.com>, and <nikeshoes-store.com> domain names are registered with Key-Systems GmbH d/b/a domaindiscount24.com and that Respondent is the current registrant of the names. Key-Systems GmbH d/b/a domaindiscount24.com has verified that Respondent is bound by the Key-Systems GmbH d/b/a domaindiscount24.com 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").
On July 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 4, 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@nikefactorystore.biz, postmaster@stocknike.com, postmaster@nikeshoesupplier.com, and postmaster@nikeshoes-store.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <nikefactorystore.biz>, <stocknike.com>, <nikeshoesupplier.com>, and <nikeshoes-store.com> domain names are confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nikefactorystore.biz>, <stocknike.com>, <nikeshoesupplier.com>, and <nikeshoes-store.com> domain names.
3. Respondent registered and used the <nikefactorystore.biz>, <stocknike.com>, <nikeshoesupplier.com>, and <nikeshoes-store.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nike, Inc., has used the NIKE mark along with its predecessor-in-interest for over thirty-five years in the athletic footwear market. Complainant has registered its NIKE mark with various governmental trademark authorities worldwide, including: (1) the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 978,952 issued February 19, 1974); and (2) the Chinese trademark authority (i.e. Reg. No. 143,690).
Respondent registered the <nikefactorystore.biz>, <stocknike.com>, <nikeshoesupplier.com>, and <nikeshoes-store.com> domain names between April 7, 2009 and May 11, 2009. The <nikefactorystore.biz>, <nikeshoesupplier.com>, and <nikeshoes-store.com> domain names resolve to a website that offers counterfeit versions of Complainant’s products for sale. The <stocknike.com> domain name does not resolve to an active website.
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 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 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 has adequately demonstrated its rights in the NIKE mark through its registrations of the mark with the USPTO and the Chinese trademark authority under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The <nikefactorystore.biz>, <stocknike.com>, <nikeshoesupplier.com>,
and <nikeshoes-store.com> domain names contain Complainant’s NIKE
mark while adding: (1) descriptive words such as “factory,” “store,” “stock,”
“shoe,” and/or “supplier;” (2) generic top-level domains such as “.com” or
“.biz;” and/or (3) a hyphen. The
addition of a generic top-level domain is irrelevant under Policy ¶
4(a)(i). Moreover, the mere insertion of
a hyphen generally has little effect on the confusing similarity of a disputed
domain name. Finally, descriptive words
that relate to Complainant’s business or operations tend to heighten any
resulting confusing similarity. Given
these propositions, which are based in prior UDRP precedent, the Panel
therefore finds that the disputed domain names are each confusingly similar to
Complainant’s NIKE mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a
domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb.
Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not
create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i)
confusingly similar analysis.”); see also
Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004)
(finding the respondent’s <amextravel.com> domain name confusingly
similar to Complainant’s AMEX mark because the “mere addition of a generic or
descriptive word to a registered mark does not negate” a finding of confusing
similarity under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent lacks rights and legitimate interests in the disputed domain names. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the Panel noted that, “[i]t 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.” As noted in Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005), “[t]he threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.” The Panel finds that Complainant has met its low threshold in making out such a prima facie case, and pursuant to the procedural rationale outlined in Domtar, Respondent receives its burden to set forth evidence of its rights or legitimate interests in the disputed domain names. However, Respondent has failed to tender a response in the instant case. Where a respondent has failed to provide any response, previous panels have noted that a panel is permitted to accept the allegations of the Complaint as true unless against the weight of the record. This view has been noted in numerous decisions, including in Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel will now undergo an investigation of the record as it pertains to the enumerated factors listed under Policy ¶¶ 4(a)(ii) and 4(c), in order to decipher whether Respondent has rights or legitimate interests in the disputed domain names.
The first element the Panel will scrutinize is whether
Respondent is commonly known by the disputed domain name under Policy ¶
4(c)(ii). The Panel notes that Complainant’s
mark has generated substantial fame. In G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003), the panel held
that:
Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.
In this case, Respondent has not proffered any evidence that would assist the Panel in concluding that Respondent has any such identity along with the disputed domain names. The relevant WHOIS information lists Respondent as “Fang Wei c/o Fang Wei a/k/a Liu Wen c/o Liu Wen a/k/a Cathy Pearce c/o Cathy Pearce a/k/a Hai Mingwe c/o Hai Mingwe.” Moreover, Complainant expressly claims that Respondent has no right or authorization to use Complainant’s mark in any fashion, much less in the disputed domain names. Therefore, the Panel must find that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii), which is evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also 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).
The <nikefactorystore.biz>, <nikeshoesupplier.com>, and <nikeshoes-store.com>
domain names each resolve to a commercial website. Complainant has submitted screenshots
indicating that the goods sold (or purported to be sold) over this website are
similar to Complainant’s goods.
Complainant has tendered evidence that these goods are so similar, that
in fact they are counterfeit versions of Complainant’s own athletic footwear
products. Even though Respondent has
failed to provide contrary evidence, the Panel is nonetheless persuaded from
Complainant’s Complaint in finding that Respondent has engaged in a counterfeit
venture at Complainant’s expense. It
would appear that Respondent is attempting to convince Internet users who are
redirected to Respondent’s website from these disputed domain names that they
are doing business with Complainant, when in reality they are dealing with an
imposter. It should be noted that
competing with a complainant through the use of a confusingly similar disputed
domain name has been held to fail the Policy ¶¶ 4(c)(i) and (iii) tests—namely,
that Respondent has not made a bona fide
offering of goods or services or a legitimate noncommercial or fair use,
respectively. See, e.g., Am. Int’l
Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist
Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a
confusingly similar domain name to advertise real estate services which
competed with the complainant’s business did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii)). However, what Respondent
has accomplished here is one step further: Respondent has passed itself off as
Complainant on top of maximizing Internet user confusion through the
confusingly similar disputed domain names.
Such is additional evidence that Respondent has failed Policy ¶¶ 4(c)(i)
and (iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
While Respondent’s
abovementioned disputed domain names resolve to commercial websites promoting
counterfeit goods, the <stocknike.com> domain name does not appear
to resolve to any active website, based on Complainant’s contentions and evidentiary
submissions. Complainant surmises that
Respondent likely intends the same use for this disputed domain name as the
others. That may be, however, there is currently
no evidence tying this domain name to such a use. Complainant then correctly points the Panel
to previous UDRP precedent wherein inactive holding of a domain name has likewise
failed the Policy ¶ 4(a)(ii) burdens of Respondent. That is, one does not engender rights or
legitimate interests merely based on holding a disputed domain name without any
active use or demonstrable preparations to use the disputed domain name in
connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25,
2000) (finding that the respondent’s failure to develop the site demonstrates a
lack of legitimate interest in the domain name); see also State Fair of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As mentioned previously, Respondent’s <nikefactorystore.biz>, <nikeshoesupplier.com>, and <nikeshoes-store.com>
domain names resolve to a website that promote counterfeit versions of
Complainant’s products. The disruptive
effect that Respondent therefore has on Complainant’s business is clear. Respondent has therefore registered and
continued to use these disputed domain names in bad faith under Policy ¶
4(b)(iii). See St. Lawrence Univ.
v. Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet
users seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”); see also G.D. Searle & Co. v. 24-7-Commerce.com,
FA 114707 (Nat. Arb. Forum July 31, 2002) (finding that although the respondent
failed to provide evidence of a plan to use the
<celebrex-vioxx-ultram-super-blue-stuff.com> domain name, the panel
inferred that the respondent registered the domain name for ultimate use as an
online pharmacy because the domain name incorporated marks of competing
pharmaceutical products).
The aforementioned <nikefactorystore.biz>, <nikeshoesupplier.com>, and <nikeshoes-store.com>
domain names are inherently
commercial in nature, in that they are utilized to resolve to a website that
promotes counterfeit goods. It is clear
that Respondent intentionally created a likelihood of confusion as to
Complainant’s affiliation with the disputed domain names and resolving website
in order to profit. Since Respondent is
passing itself off as Complainant to promote its imposter footwear, the Panel
finds that Respondent has undoubtedly engaged in bad faith registration and use
under Policy ¶ 4(b)(iv) with respect to these three domain names. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent
[used “HP” in its domain name] to benefit from the goodwill associated with
Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part,
to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).”); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
Finally, the Panel has previously
determined that Respondent has inactively held the <stocknike.com>
domain name without undertaking any
demonstrable preparations to utilize said domain name. Complainant’s contentions that Respondent
intends to join this domain name with the others in its counterfeit business are
not necessary or relevant to the concept of inactive holding of a domain
name. Therefore, the Panel finds that
Respondent has engaged in bad faith registration and use with respect to this
domain name under Policy ¶ 4(a)(iii). See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001)
(holding that, despite the respondent’s decision to [inactively] hold the
disputed domain name, “Respondent has made its intention clear and the
continuing threat hanging over the Complainant’s head constitutes bad faith
use”); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s [failure to make an active use] of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikefactorystore.biz>, <stocknike.com>, <nikeshoesupplier.com>, and <nikeshoes-store.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 21, 2009
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