Nike, Inc. v. zhongxian lin
Claim Number: FA1211001469596
Complainant is Nike, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is zhongxian lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nike-stores.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2012; the National Arbitration Forum received payment on November 12, 2012.
On November 5, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <nike-stores.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@nike-stores.com. Also on November 13, 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 December 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" 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.
A. Complainant
1. Complainant was founded and began using the NIKE mark for its footwear and athletic apparel in 1971. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for the NIKE mark (e.g., Reg. No. 1,214,930 registered Nov. 2, 1982). See Complainant’s Exhibit E 1-6.
2. Respondent’s <nike-stores.com> domain name is confusingly similar to the NIKE mark as the domain name contains the NIKE mark and the generic term “stores.”
3. Respondent has no rights or legitimate interests in the <nike-stores.com> domain name under Policy ¶ 4(a)(ii).
i. Respondent is not commonly known by the disputed domain name or the NIKE mark under Policy ¶ 4(c)(ii). Respondent does not operate a business or other organization under the name or mark and does not own any trademark or service mark rights in the disputed domain name.
ii. Respondent is using the disputed domain name to sell counterfeit and unauthorized products of Complainant as well as products from other companies that directly compete with Complainant, such as Puma and Lacoste. See Complainant’s Exhibit F 1-3.
4. Respondent registered and is using the disputed domain name in bad faith.
i. Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the sponsorship or source of the website. Respondent is intentionally using the famous NIKE mark to sell counterfeit, unauthorized, and competing goods while using Complainant’s mark and logos on the resolving website.
ii. Respondent had actual and constructive knowledge of Complainant and its rights in the NIKE mark. Complainant’s mark is internationally famous and has been registered all over the world, thus providing Respondent with constructive knowledge of the mark. Further, the content of the resolving website and sale of counterfeit and unauthorized goods indicates Respondent’s actual knowledge of Complainant and the NIKE mark. Registration of the disputed domain name despite such knowledge is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its NIKE mark.
2. Respondent’s <nike-stores.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the 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 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.
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.”).
Complainant asserts that it was founded and began using the NIKE mark for its footwear and athletic apparel in 1971. Complainant notes that it owns numerous trademark registrations with the USPTO for the NIKE mark (e.g., Reg. No. 1,214,930 registered Nov. 2, 1982). See Complainant’s Exhibit E 1-6. The Panel finds that although Respondent is purportedly from China, that Complainant’s trademark registrations with the USPTO are sufficient to establish rights in the NIKE mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Further, Complainant argues that Respondent’s <nike-stores.com> domain name is confusingly similar to the NIKE mark as the domain name contains the NIKE mark and the generic term “stores.” The Panel observes the disputed domain name contains Complainant’s mark entirely while adding a hyphen, the generic term “stores,” and the generic top-level domain (“gTLD”) “.com.” The Panel notes that the addition of a hyphen and gTLD have been found by prior panels to be insignificant to a confusingly similar analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Further, prior UDRP panels have also held that the addition of a generic term to a famous mark does not remove the disputed domain name from the realm of confusing similarity. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Therefore, the Panel holds that the <nike-stores.com> domain name is confusingly similar to the NIKE mark under 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 shifts to Respondent to show it does have 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 claims that Respondent has not rights or legitimate interests in the <nike-stores.com> domain name under Policy ¶ 4(a)(ii). In support of this argument, Complainant asserts that Respondent is not commonly known by the disputed domain name or the NIKE mark under Policy ¶ 4(c)(ii). Further, Complainant contends that Respondent does not operate a business or other organization under the name or mark and does not own any trademark or service mark rights in the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies the registrant as “zhongxian lin,” which the Panel finds to be dissimilar from the <nike-stores.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(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.”); Nike, Inc. v. 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 the complainant's distinct and famous NIKE trademark).
Further, Complainant argues that Respondent is using the disputed domain name to sell counterfeit and unauthorized products of Complainant as well as products from other companies that directly compete with Complainant, such as Puma and Lacoste. See Complainant’s Exhibit F 1-3. The Panel finds that such use of the <nike-stores.com> domain name does not show that Respondent is making 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Complainant asserts that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the sponsorship or source of the website. Complainant notes that Respondent is intentionally using the famous NIKE mark in the dispute domain name to sell counterfeit, unauthorized, and competing goods while using Complainant’s mark and logos on the resolving website. The Panel agrees with Complainant and finds that Respondent has registered and is using the <nike-stores.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Lastly, Complainant argues that Respondent had actual and constructive knowledge of Complainant and its rights in the NIKE mark. Complainant argues that its mark is internationally famous and has been registered all over the world, thus providing Respondent with constructive knowledge of the mark. Further, Complainant asserts that the content of the resolving website and sale of counterfeit and unauthorized goods indicates Respondent’s actual knowledge of Complainant and the NIKE mark. Complainant asserts that registration of the disputed domain name despite such knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and concludes that Respondent registered the <nike-stores.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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-stores.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 27, 2012
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