Nike, Inc. v. Above.com Domain Privacy
Claim Number: FA1402001545847
Complainant is Nike, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gonike.com>, registered with Above.com Pty Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2014; the National Arbitration Forum received payment on March 5, 2014.
On March 2, 2014, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <gonike.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 March 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2014 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@gonike.com. Also on March 5, 2014, 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 March 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a. Policy ¶ 4(a)(i)
i. Complainant, Nike, Inc., is one of the world’s most famous designers and sellers of footwear, apparel, and athletic equipment, and sells its goods through its retail stores and the retail stores of other companies around the world through its NIKE marks.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NIKE marks (e.g., Reg. No. 1,214,930, registered November 2, 1982).
iii. Respondent’s <gonike.com> domain name is confusingly similar to Complainant’s NIKE mark.
b. Policy ¶ 4(a)(ii)
i. Respondent has no rights or legitimate interests in the <gonike.com> domain name.
ii. Respondent is not commonly known by the <gonike.com> domain name.
iii. Respondent’s domain name automatically redirects visitors to a URL at the site <discoverreceipt.com> and then onto a rotating series of different websites relating to a variety of subjects including footwear.
c. Policy ¶ 4(a)(iii)
i. Respondent registered the <gonike.com> domain name in bad faith.
ii. Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or a product or service on the website or location.
iii. Respondent was on both actual and constructive notice of Complainant’s rights in the marks through Complainant’s trademark registrations, its common law trademark rights, and its extensive, global use of the famous NIKE marks which long predate the creation date of the <gonike.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Nike, Inc. of Beaverton, OR, USA. Complainant is the owner of domestic and international registrations for the mark NIKE and related marks which it has used continuously since at least as early as 1982 in connection with its provision of footwear, sportswear and athletic equipment.
Respondent is Above.com Domain Privacy, of Victoria, Australia. Respondent’s registrar’s address is listed as the same location. Respondent registered the <gonike.com> domain name on or about January 25, 2009.
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 argues that it is one of the world’s most famous designers and sellers of footwear, apparel, and athletic equipment, and sells its goods through its retail stores and the retail stores of other companies around the world through its NIKE marks. Complainant alleges that it is the owner of trademark registrations with the USPTO for the NIKE marks (e.g., Reg. No. 1,214,930, registered November 2, 1982). The Panel notes that while Respondent appears to reside in Australia, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as it can establish rights in the mark in some jurisdiction. See 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). The Panel here finds that Complainant’s registration of the NIKE mark with the USPTO sufficiently provides evidence that it owns rights in the 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)).
Complainant asserts that Respondent’s <gonike.com> domain name is confusingly similar to Complainant’s NIKE mark. The Panel notes that Respondent adds the generic term “go” before Complainant’s NIKE mark in the disputed domain name. The Panel finds that Respondent’s inclusion of a generic term to Complainant’s mark in irrelevant under Policy ¶ 4(a)(i) analysis. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s NIKE mark in its disputed domain name. The Panel finds that Respondent’s addition of a gTLD to Complainant’s mark does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel here finds that Respondent’s <gonike.com> domain name is confusingly similar to Complainant’s NIKE mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the <gonike.com> domain name. Complainant alleges that Respondent does not operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the NIKE name. The Panel notes that Respondent is identified as the registrant “Above.com Domain Privacy” in the WHOIS record for the disputed domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. The Panel here finds that Respondent is not commonly known by the <gonike.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s <gonike.com> domain name automatically redirects visitors to a URL at the site <discoverreceipt.com> and then onto a rotating series of different websites relating to a variety of subjects including footwear. Complainant asserts that Respondent diverts Complainant’s customers and potential customers to these websites which are not associated with Complainant. Previous panels have held that a respondent’s use of the domain name to link to competitors of a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent is not using the <gonike.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent, by using a <gonike.com> domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or a product or service on the website or location. Complainant argues that some of the websites to which visitors are forwarded feature goods and services, some of which feature competing footwear. Complainant claims that each time a searcher reaches a website from the disputed domain name, Respondent receives compensation from the owner of the <discoverreceipt.com> website and the various website owners who are then linked through the website of the <gonike.com> domain name. Complainant argues that Respondent receives compensation based upon the number of hits these website owners get from visitors who are forwarded to their sites by Respondent. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to complainant’s mark to redirect users to a website that offered services similar to those offered by complainant. The Panel here finds that Respondent has registered and is using the <gonike.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <gonike.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 14, 2014
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