NIKE, Inc. v. Julia Leroy
Claim Number: FA1409001580497
Complainant is NIKE, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Julia Leroy (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discount-nike-store.com>, <2013nikefree-dk.com>, and<nike-free-dk.net>, registered with Name.com, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 18, 2014; the National Arbitration Forum received payment September 24, 2014.
On October 2, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <discount-nike-store.com>, <2013nikefree-dk.com>, and<nike-free-dk.net> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. verified that Respondent is bound by the Name.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@discount-nike-store.com, postmaster@2013nikefree-dk.com, postmaster@nike-free-dk.net. Also on October 13, 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 November 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
Complainant uses NIKE for an array of sports and athletic apparel. The NIKE mark is registered with the USPTO (e.g., Reg. No. 1,214,930, registered Nov. 2, 1982). The domain names all tag on generic terms to the NIKE mark and are confusingly similar to the mark.
Respondent has no rights to or legitimate interests in the domain names. Respondent is not commonly known by the disputed domain names, as seen in the WHOIS records. Further, Respondent is using two of the domain names, <2013nikefree-dk.com> and <nike-free-dk.net>, to pass itself off as Complainant. As to the <discount-nike-store.com> domain name, Respondent uses this domain name to sell competing goods through a rather generic-looking website.
Respondent registered and uses the domain names in bad faith. Respondent is profiting on the likelihood that Internet users will confuse Complainant as a source or origin of the offers presented on each of the domain names. Further, Respondent registered the domain names with actual knowledge of Complainant’s rights.
Respondent makes the following contentions in this proceeding:
Respondent did not submit a response.
The Panel notes that the domain names were registered some years after Complainant’s rights in the mark, established at least by 1982, as follows:
Complainant established that it has rights and legitimate interests in the disputed domain names.
Respondent did not show rights or legitimate interests in the disputed domain names and Respondent has no such rights or interests.
Respondent registered three domain names that are confusingly similar to Complainant’s mark.
Respondent registered the three domain names and uses them 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses NIKE for an array of sports and athletic apparel. Complainant claims, and the record shows, that the NIKE mark is registered with the USPTO (e.g., Reg. No. 1,214,930, registered Nov. 2, 1982). This Panel finds that Complainant has rights in the mark by way of the USPTO registration. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant also claims these domain names all tag on generic terms to the NIKE mark and are confusingly similar to the mark. The Panel agrees that the addition of hyphens and the gTLD “.com” is not relevant to this 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, the Panel also agrees that these additional terms are all generic (“2013” or “discount,” etc.) and thus do not distinguish the domain names under a Policy ¶ 4(a)(i) analysis. See, e.g., Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). As such, this Panel finds that all of the domain names are confusingly similar under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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 argues that Respondent is not commonly known by the disputed domain names, as seen in the WHOIS records. The Panel notes that “Julia Leroy” is listed as the registrant of record for these domain names. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel held that no basis supported finding the respondent to be commonly known by a domain name when the record was devoid of any inference suggesting that the respondent was known by the domain name. Here this Panel finds that Respondent is not commonly known by any of the <discount-nike-store.com>, <2013nikefree-dk.com>, and<nike-free-dk.net> domain names under a Policy ¶ 4(c)(ii) evaluation.
Complainant notes how Respondent is using two of the domain names, <2013nikefree-dk.com> and<nike-free-dk.net>, to pass itself off as Complainant. The Panel observes that Complainant’s own marks and logos are used to promote the competing offers seen on these two domain names’ websites. See Compl., at Attached Exs. G–H. This Panel finds that such use is not protected as Respondent is using Complainant’s goodwill to sell related and competing products. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
Complainant further argues that as to the <discount-nike-store.com> domain name, Respondent uses this domain name to sell competing goods through a rather generic-looking website. The Panel agrees that the <discount-nike-store.com> domain name appears to resolve to a website dedicated to promoting competing products. See Compl., at Attached Ex. F. This Panel agrees that operating a competing website through a confusingly similar domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services. 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).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent is profiting on the likelihood that Internet users will confuse Complainant as a source or origin of the offers presented on each of the domain names. The Panel notes that these domain names resolve to websites that trade upon Complainant’s goodwill by offering counterfeit goods, doing trade by passing off, or selling completely competitive goods. See Compl., at Attached Exs. F–H. The Panel agrees that prior decisions support a finding of Policy ¶ 4(b)(iv) bad faith here as ultimately Respondent is appropriating the NIKE mark to make an unauthorized profit-center for Respondent’s own commercial gain. See, e.g., 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); DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Complainant claims that Respondent registered the domain names with actual knowledge of Complainant’s rights. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds here that, due to the fame of Complainant's mark and given Respondent’s use, Respondent shows actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <discount-nike-store.com>, <2013nikefree-dk.com>, and<nike-free-dk.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 17, 2014
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