Nike, Inc. v. Totto Cutugno
Claim Number: FA0804001180655
Complainant is Nike, Inc. (“Complainant”), represented by Wendy
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nikejob.com>, registered with Moniker Online Services, Inc.
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 April 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 23, 2008.
On April 29, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <nikejob.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 April
30, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 20, 2008
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@nikejob.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2008, 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." 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 makes the following assertions:
1. Respondent’s <nikejob.com> domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nikejob.com> domain name.
3. Respondent registered and used the <nikejob.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nike, Inc., designs, manufactures and markets a broad range of athletic footwear, apparel and equipment under its NIKE mark. Complainant first registered its NIKE mark with the United States Patent and Trademark Office (“USPTO”) on February 19, 1974 (Reg. No. 978,952). Since then Complainant has obtained additional registrations from the USPTO and other governmental authorities for its NIKE mark.
Respondent registered the disputed domain name on January 4, 2006. Respondent’s disputed domain name apparently resolves to a website which offers goods or services related to Complainant’s goods and services.
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 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.”).
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.
Complainant has provided evidence it registered its NIKE
mark with the USPTO. The Panel finds
this registration sufficiently establishes Complainant’s rights in its NIKE
mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Respondent’s <nikejob.com>
domain name fully
incorporates Complainant’s NIKE mark with the additions of a generic term and
the generic top-level domain (“gTLD”) “.com.”
The Panel finds these additions do not sufficiently distinguish
Respondent’s disputed domain name from Complainant’s NIKE mark. Thus the Panel finds the disputed domain name
is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant is required to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes this, the burden shifts to Respondent to prove it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). To establish a prima facie case, Complainant must allege that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) based upon Respondent’s use of the disputed domain name. Complainant makes such allegations, but merely states with respect to Respondent’s use that “[p]ersons encountering the Infringing Domain Name in the context of the Internet are likely to believe, incorrectly, that the Infringing Domain Name relates to opportunities to obtain merchandise from Nike, or that Respondent’s activities are affiliated with or sponsored by Nike.”
Since Respondent failed to respond to the Complaint, the Panel may consider all allegations in the Complaint to be true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Therefore, in light of Respondent’s failure to respond, Complainant’s single allegation with respect to Respondent’s use of the <nikejob.com> domain name is sufficient to establish a prima facie case pursuant to Policy ¶ 4(a)(ii). However, the Panel notes that additional explanation, or especially the submission of screen shots evidencing Respondent’s use of the disputed domain name, would have been very helpful in the Panel’s analysis.
In accordance with most decisions decided under the UDRP, the Panel will examine all evidence in the record pursuant to Policy ¶ 4(c) before making a final determination regarding Respondent’s rights and legitimate interests.
Complainant contends Respondent is using the confusingly similar disputed domain name to lead Internet users to mistakenly believe they have the opportunity to obtain merchandise from Nike. The Panel finds Respondent’s use is neither 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The WHOIS information and record do not indicate Respondent is commonly known by the <nikejob.com> domain name. The WHOIS information lists Respondent as “Totto Cutugno,” and the record indicates Complainant has not authorized Respondent to use its NIKE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends Respondent is using the confusingly similar disputed domain name to lead Internet users to mistakenly believe they can obtain Complainant’s merchandise at Respondent’s website. The Panel finds this use demonstrates Respondent is attempting to profit from Complainant’s goodwill associated with its NIKE mark. The Panel finds this use of the disputed domain name constitutes is evidence of bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) & (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also H-D Michigan Inc. v. Buell d/b/a Pre-owned Harleys, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikejob.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 5, 2008
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