Nike, Inc. v. Moonshy DNS
Claim Number: FA1309001517888
Complainant is Nike, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Moonshy DNS (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikecloud.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2013; the National Arbitration Forum received payment on September 10, 2013.
On September 5, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <nikecloud.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 September 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2013 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@nikecloud.com. Also on September 11, 2013, 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant uses the NIKE mark extensively in connection with footwear goods. In fiscal year 2011 Complainant’s NIKE family of companies reported over $20.9 billion USD in revenues.
Complainant has registered the NIKE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,314,930 registered November 2, 1982).
Respondent registered the <nikecloud.com> domain name, which merely adds the generic term “cloud” to the NIKE mark, on July 3, 2013.
Respondent is not known by this <nikecloud.com> domain name. Respondent’s use of the domain name is not bona fide as the domain name is used to provide a classic example of pay-per-click revenue farming. Respondent is merely promoting random hyperlinks through this domain name.
Respondent is seeking to attract commercial advertising revenue by confusing Internet users into believing that the content of the <nikecloud.com> domain name is associated with Complainant. Some of the hyperlinks advertised through the <nikecloud.com> domain name are competitive with the NIKE brand.
Respondent had actual or constructive notice of Complainant’s rights in the NIKE mark prior to registering and using the <nikecloud.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for NIKE.
Respondent is not affiliated with Complainant and had not been authorized to use the NIKE mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in NIKE.
Respondent is using the <nikecloud.com> domain name to address a website displaying and capitalizing on multiple pseudo-random pay-per-click hyperlinks.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the NIKE mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark 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, Complainant has met the requirements of Policy ¶ 4(a)(i)”).
Respondent’s <nikecloud.com> domain name contains Complainant’s entire NIKE trademark, adds the generic term “cloud” and appends the top level domain name “.com.” The addition of “cloud” to Complainant’s domain name does nothing to materially differentiate the domain name from Complainant’s mark. Further, the necessary top level domain name is irrelevant for the purpose of Policy ¶4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <nikecloud.com > domain name is confusingly similar to Complainant’s NIKE mark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (finding that the addition of unrelated terms, that are either generic or non-distinctively descriptive, fails to defeat the confusing similarity between the domain name and the mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Moonshy DNS” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s domain name address to a website hosted by Go.Daddy.com, LLC, which features an array of hyperlinks to various products, including competing footwear goods. Respondent use of the domain name to promote random hyperlinks, some to Complainant’s competition, is neither a Policy ¶4 (c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use through the <nikecloud.com> domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (finding no bona fide about the use of a domain name for the promotion of competing commercial products).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, some of the hyperlinks advertised through the <nikecloud.com> domain name compete with Complainant’s NIKE brand. Such links include links to “New Jordan Shoes: Cheap” and “Minimalist Dress Shoes” as well as other non-related links. Respondent’s use of the confusingly similar <nikecloud.com> domain name to promote hyperlinks to competing goods demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the NIKE trademark before registering the at-issue domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s NIKE mark, as well as from the exploitive manner in which Respondent’s uses the <nikecloud.com> domain name to capitalize on Complainant’s goodwill. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the at-issue domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikecloud.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 3, 2013
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