Nike, Inc. v.
Ben Dias
Claim Number: FA0211000135016
PARTIES
Complainant is Nike, Inc., Beaverton, OR (“Complainant”). Respondent is Ben Dias, College Station, TX
(“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <nikebats.com>, registered with Dotster, Inc.
PANEL
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 26, 2002; the Forum received a hard copy of the Complaint on November 27, 2002.
On November 27, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <nikebats.com> is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 December 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 23, 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@nikebats.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.
On January 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 makes the following assertions:
Respondent’s <nikebats.com> domain name is confusingly similar to Complainant’s NIKE mark.
Respondent does not have any rights or legitimate interests in the <nikebats.com> domain name.
Respondent registered and used the <nikebats.com> domain
name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Nike,
Inc., holds many incontestable trademark registrations for the NIKE mark in the
United States (e.g. U.S. Reg. Nos. 978,952; 1,153,938; 1,243,248). Complainant has invested millions of dollars
in advertising and promotion of the NIKE mark and has sold billions of dollars
in sports-related merchandise under the mark.
The inherant distinctiveness of the NIKE mark, along with the substantial
sales performed under the mark, have generated substantial goodwill associated
with said mark.
Respondent, Ben
Dias, registered the <nikebats.com> domain name on January 13, 2002, and is not
licensed or authorized to use the NIKE mark for any purpose. Respondent uses the disputed domain name to
redirect Internet users to its website, where it sells a variety of
sports-related equipment, including baseball bats and other merchandise
manufactured by both Complainant and competitors of Complainant.
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.
Complainant has established rights in the distinctive NIKE mark through registration on the Principal Register of the United States Patent and Trademark Office, as well as through worldwide use of the mark in commerce.
Respondent’s <nikebats.com> domain name is confusingly
similar to Complainant’s NIKE mark. Respondent’s domain name merely takes the
distinctive NIKE mark and adds the generic word “bats” to it. As this particular generic word is an actual
product produced by Complainant under the NIKE mark, its inclusion in the
disputed domain name does not dispell any confusing similarity between the
domain name and the mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed domain
name out of the realm of confusing similarity).
Accordingly, the Panel finds that the <nikebats.com> domain name is confusingly similar to Complainant’s NIKE mark under Policy ¶ 4(a)(i).
Respondent uses the <nikebats.com> domain name to redirect Internet users to its website, where it sells sports merchandise. This commerical activity is in the same field as Complainant, who also merchandises sports products, and as such Respondent’s use of the disputed domain name is not a bona fide offering of goods or services, and Policy ¶ 4(c)(i) does not apply. Likewise, the commerical nature of Respondent’s use of the disputed domain name renders inapplicable Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).
Respondent’s WHOIS
contact information lists his name as “Ben Dias,” and he does not appear to be
“commonly known by” the name NIKEBATS or <nikebats.com>. Given
the distinctive nature of Complainant’s NIKE mark, along with its worldwide
fame and notoriety, it would be nearly impossible for Respondent to ever claim
to be “commonly known by” any derivative of the NIKE mark, and the Panel finds
Policy ¶ 4(c)(ii) inapplicable to Respondent.
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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Respondent’s failure to respond to the Complaint will also be viewed by the Panel as evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); 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).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <nikebats.com> domain name under Policy ¶ 4(a)(ii).
Respondent’s use of the <nikebats.com> domain name to sell sports merchandise is commercial in nature. In choosing to register a domain name which incorporates the NIKE mark in its entirety, and then capitalizing on the likelihood of confusion that would result from associating itself with the mark, Respondent registered and used the infringing domain name in bad faith under Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The fact that
Respondent knew of Complainant’s rights in the NIKE mark prior to registration
of the <nikebats.com> domain name is also evidence of bad faith
registration. Respondent, in linking
the disputed domain name to a sports-retail webpage, evidences that it had
knowledge of the NIKE mark and associated merchandise prior to seeking
registration. Further evidence of
actual knowledge of the NIKE mark comes from its registration with the United
States Patent and Trademark Office, as well as the global notoriety of the NIKE
mark. Such registration is evidence of bad faith under Policy ¶
4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the worldwide prominence of the
mark and thus Respondent registered the domain name in bad faith); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue,
Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla.
2001) (noting that “a Principal Register registration [of a trademark or
service mark] is constructive notice of a claim of ownership so as to eliminate
any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the domain names).
Accordingly, the Panel finds that Respondent registered and used the <nikebats.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <nikebats.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 7, 2002
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