Nike, Inc. v. Sha Shafeipour
Claim Number: FA0210000128667
Complainant is Nike, Inc., Beaverton, OR (“Complainant”) represented by Dorothy C. Alevizatos, of Nike, Inc. Respondent is Sha Shafeipour, Albuquerque, NM (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iwantnike.com>, registered with Domain Bank, Inc.
On November 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 18, 2002; the Forum received a hard copy of the Complaint on October 18, 2002.
On October 29, 2002, Domain Bank, Inc. confirmed by e-mail to the Forum that the domain name <iwantnike.com> is registered with Domain Bank, Inc. and that Respondent is the current registrant of the name. Domain Bank, Inc. has verified that Respondent is bound by the Domain Bank, Inc. 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 October 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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.
The <iwantnike.com> domain name is confusingly similar to Complainant's NIKE mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent failed to submit a Response.
Complainant is the world’s leading sports and fitness company. Since 1971, Complainant has used the NIKE mark in connection with all of its products and services, including footwear, apparel, equipment and retail stores. Complainant’s NIKE mark is recognized across the globe as one of the world’s most famous trademarks.
Complainant owns numerous trademark registrations for NIKE with the United States Patent and Trademark Office (“USPTO”) including Registration Numbers: 1,924,353; 2,025,926; 2,239,077; 194,565; and 2,196,735.
Respondent registered the disputed domain name <iwantnike.com> on March 1, 2001. Respondent has attempted to sell its registration rights to the disputed domain name to Complainant. The domain name currently does not resolve to a website. Respondent refused to transfer the disputed domain name for Complainant’s offer to pay its out-of-pocket expenses.
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 the 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.
Paragraph 4(a) of the Policy requires that the 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.
Identical and/or Confusingly Similar
Complainant has established that it has rights in the NIKE mark through extensive and continuous use throughout the world, as well as its registrations with the USPTO.
Respondent’s <iwantnike.com> domain name is confusingly similar to Complainant’s mark because it merely adds the two words “I want” to Complainant’s famous NIKE mark, creating the phrase “I want Nike.” Based on the fame of Complainant’s NIKE mark, “I want Nike” is not distinguishable from Complainant’s NIKE mark because the phrase is about desiring Complainant’s goods. Therefore, the disputed domain name does not create a distinct mark capable of overcoming a claim of confusing similarity. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent has made no use of the disputed domain name other than to attempt to sell its registration to Complainant. Respondent has made no attempt to develop a website, or use the domain name for any other purpose. The sale of a domain name registration is not considered to be 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). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).
Based on the fame of Complainant’s NIKE mark it would be very difficult for Respondent to prove that it is commonly known as I WANT NIKE or <iwantnike.com>. Respondent’s failure to come forward in this dispute can be inferred to be an admission that it is not commonly known as the disputed domain name and therefore, Respondent has no rights or legitimate interests in <iwantnike.com> pursuant to Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Policy paragraph 4(b) outlines four specific situations that give rise to bad faith registration and use. These four situations are meant only to be exemplary and are therefore not exclusive. The Panel may consider the totality of circumstances when determining whether a Respondent registered or use a domain name in bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Respondent has held the disputed domain name for over a year and has failed to develop a website. The mere holding of a domain name for an extended period of time with no development for any purpose is considered to be passive holding. Passive holding gives rise to an assumption of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Furthermore, because Complainant’s NIKE mark is famous it can be inferred that Respondent had actual notice of Complainant’s mark when it registered the disputed domain name. Respondent, therefore, registered an infringing domain name with actual knowledge of Complainant’s rights. This behavior is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).
Based on the fame of Complainant’s NIKE mark and the fact that Respondent has made no use of the disputed domain name other than attempting to sell its registration to Complainant, it can be inferred that Respondent registered the disputed domain name with the intent to sell its registration. The registration of a domain name for the purpose of selling, renting or transferring it is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where Respondent made no use of the domain names except to offer them to sale to the Complainant).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <iwantnike.com> be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: December 16, 2002
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