Nike, Inc. v. Sha Shafeipour
Claim Number: FA0210000128667
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@iwantnike.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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