Nike, Inc. v. Nathan Reimer
Claim Number: FA1206001451134
Complainant is Nike, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Nathan Reimer (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikeplusshop.com>, registered with GoDaddy.com, LLC.
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 June 28, 2012; the National Arbitration Forum received payment July 10, 2012.
On June 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nikeplusshop.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2012, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nikeplusshop.com. Also on July 10, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2012, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant asserts the following in this proceeding:
a) Complainant contends that it has rights in the NIKE mark, which it uses in connection with footwear;
b) Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the NIKE mark (e.g., Reg. No. 1,214,930 registered November 2, 1982). Complainant also owns the NIKE mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA205933 registered March 21, 1975);
c) The <nikeplusshop.com> domain name is confusingly similar to the NIKE mark;
d) Respondent is not commonly known by <nikeplusshop.com> domain name;
e) The <nikeplusshop.com> domain name resolves to a website which displays links to unrelated goods or services;
f) Respondent intentionally attracts Internet users to the disputed domain name for commercial gain by creating a likelihood of confusion as to the source of the <nikeplusshop.com> domain name;
g) Respondent registered the <nikeplusshop.com> domain name with actual and constructive knowledge of Complainant’s rights in the NIKE mark.
Respondent did not submit a Response in this proceeding.
The Panel notes that Respondent registered the <nikeplusshop.com> domain name July 3, 2011.
Complainant established rights in the mark contained within the disputed domain name.
The domain name is confusingly similar to the Complainant’s mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
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 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.
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.”).
Complainant asserts that it has rights in the NIKE mark. Complainant contends that it uses its mark in connection with the design, advertising, distribution and sale of footwear, sportswear, athletic equipment and other products and services. Complainant establishes that it is the owner of the USPTO registrations for the NIKE mark (e.g., Reg. No. 1,214,930 registered November 2, 1982), as well as a registration with CIPO (Reg. No. TMA205933 registered March 21, 1975). Panels have found that registrations of a mark with the USPTO and CIPO are sufficient to show rights in the mark. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO). Therefore, the Panel finds that Complainant has rights in the NIKE mark under Policy ¶ 4(a)(i).
Complainant also argues that the <nikeplusshop.com> domain name is confusingly similar to the NIKE mark. The Panel finds that Respondent’s addition of the generic terms “plus” and “shop” do not negate a finding of confusing similarity. See 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 Respondent’s addition of the generic top-level (“gTLD”) “.com” is irrelevant to a Policy ¶ 4(a)(i) determination. 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 Respondent’s <nikeplusshop.com> domain name is confusingly similar to the NIKE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <nikeplusshop.com> domain name. Complainant argues that Respondent does not operate a business or other organization under the name and does not own intellectual property rights in the mark. The Panel notes that the WHOIS record for the <nikeplusshop.com> domain name lists “Nathan Reimer” as the domain name registrant. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel held that the information available, including the WHOIS record, determined whether a respondent was commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <nikeplusshop.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of <nikeplusshop.com> domain name demonstrates Respondent’s lack of rights and legitimate interests. Complainant asserts that the <nikeplusshop.com> domain name resolves to a website that displays pay-per-click links not associated with or related to Complainant’s branded products. Panels have found that the display of links unrelated to Complainant’s offerings is not a use that is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondent’s use of the <nikeplusshop.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy 4(a)(ii).
Complainant contends that Respondent intentionally attempted to attract, for commercial gain, Internet users to the <nikeplusshop.com> domain name by creating a likelihood of confusion as to the source of the <nikeplusshop.com> domain name. Complainant argues that the disputed domain name resolves to a website that displays links to goods and services unrelated to Complainant. Complainant asserts that the Respondent made an unauthorized registration of a confusingly similar domain name and is commercially gaining from the use of the website. The Panel finds that the disputed domain name is meant to allow Respondent to commercially gain from Internet users’ mistakes. Thus, the Panel finds that Respondent registered and is using the <nikeplusshop.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant also contends that in light of the extensive use and registration of Complainant's NIKE mark, it is inconceivable that Respondent could have registered the <nikeplusshop.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; 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 <nikeplusshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 15, 2012.
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