NIKE, Inc. v. Elah Blake / N/A
Claim Number: FA1409001580701
Complainant is NIKE, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Elah Blake / N/A (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikeschoolinnovationfund.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2014; the National Arbitration Forum received payment on September 24, 2014.
On September 20, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <nikeschoolinnovationfund.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@nikeschoolinnovationfund.org. Also on September 25, 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 October 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The Complainant owns the NIKE trademark (the “NIKE Mark”) and makes extensive use of this Mark such that it has become extraordinarily famous throughout the world. NIKE carries on an established business in respect of a large variety of goods, including footwear, athletic shoes, clothing, bags, sporting goods, eyewear, sunglasses and many others. NIKE is one of the world’s leading manufacturers of sports shoes and sports apparel of all kinds, and also operates retail stores under the NIKE Mark in many cities around the world.
NIKE consistently appears in Fortune Magazine’s annual ranking of “The World’s Most Admired Companies” and, according to Interbrand’s annual publication of the 100 “Best Global Brands”, NIKE consistently ranks among the highest valued brands in the world. For example, in 2001, NIKE was ranked 34th in the world, valued at $7.589 billion and in 2013, it was ranked 24th in the world, valued at $17.085 billion. Total sales of products bearing the NIKE Marks have grown from approximately $149 Million in 1979 to over $25 Billion in 2013. During that same time period global advertising expenditures by NIKE have increased from approximately $6 Million to over $2.7 Billion. NIKE’s ads appear in nearly every form of media including television, print, billboards, sports arena signs, and the web (including its site at www.Nike.com). The NIKE Mark is displayed by sports teams and athletes competing at events such as the Olympics, the FIFA World Cup, the U.S. Open, the Major League Baseball World Series, and the National Football League Super Bowl. NIKE also sponsors celebrity sports men and women, including Michael Jordan, LeBron James, Kobe Bryant, Kevin Durant, Wayne Rooney, Serena Williams, Derek Jeter.
Nike also values the communities in which it operates. Throughout its history, Nike has taken an interest in philanthropic causes and made significant efforts to better the lives of its fellow citizens. Of particular interest to this dispute is NIKE’s collaboration with the Portland Business Alliance Charitable Institute (PBACI) to create the Nike School Innovation Fund (NSIF) whose stated goal is to support innovation in education and leadership to improve student achievement. NSIF does this by providing support, expertise, and millions of dollars to a variety of student programs. The PBACI owned the <NikeSchoolInnovationFund.org> domain but inadvertently failed to renew it earlier this year. It was then registered by the Respondent.
NIKE is also a partner with (RED), an organization seeking to raise awareness and funds for the Global Fund to help eliminate AIDS in Africa; a founding partner of the United Nations High Commission for Refugees’s NineMillion.org initiative, which seeks to raise funds to provide education to the more than 9 million youth living in refugee camps around the world; and co-sponsors the “Stand Up Speak Up” campaign to empower soccer fans to voice their opposition to racism in that sport.
NIKE adopted the NIKE Mark in 1971 and has continuously used this Mark around the world. The NIKE Mark is registered in over 150 countries and geographic regions around the world, including the United States, India, Australia. NIKE’s trademark registrations include the following:
NIKE Footwear in IC 25 (First Use in Commerce June 18, 1971) 1214930 (US) November 2, 1982 (Filed 2-Nov-1982)
NIKE Athletic and casual clothing for men, women and children-namely, shirts, pants, shorts, jackets, warm-up suits, headwear, socks in IC 25 (first Use In Commerce June 18, 1971) 1277066 (US) May 8, 1984 (22-Apr-1982)
NIKE IC 25 Athletic shoes 346173 (India) 21-Feb-1979
NIKE IC 25 All goods included in this class 355648 (Australia) 21-Jan-1981
Based on the long use, significant sales and advertising and worldwide fame of the NIKE Marks as identifying Nike, Inc. and its related group of companies, these marks are unquestionably famous and are known throughout the world.
Respondent’s Registration Of The <NikeSchoolInnovationFund.org> Domain Violates The Policy.
For the following reasons, the <NikeSchoolInnovationFund.org> domain violates all three elements of the Policy ¶4(a) and, as such, should be ordered TRANSFERRED to NIKE.
The <NikeSchoolInnovationFund.org> Domain Is Identical or Confusingly Similar to the NIKE Marks under Policy ¶4(a)(i).
Respondent’s <NikeSchoolInnovationFund.org> is confusingly similar, on its face, to NIKE’s registered and distinctive NIKE Mark given that it encompasses NIKE’S identical Mark. Consumers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between NIKE and Respondent by Respondent’s use of the <NikeSchoolInnovationFund.org>.
Numerous Panel decisions have held that the addition of generic or other words to a complainant’s trademark, creates a confusingly similar domain name. See, e.g., Comerica Bank v. Private Registration, WhoisGuardService.com, WIPO Case No. D2014-0529 (In ordering the domain <comericaonline.com> transferred, the Panelist held that, “[i]n accordance with the consensus of past UDRP panels, the addition of descriptive suffixes and prefixes to a trademark does not normally serve to distinguish the resulting combination as a domain name from the trademark.”); Swarovski Aktiengesellschaft v. Simon Zhang, WIPO Case No. D2014-0583 (Adding the word “save” to the SWAROVSKI mark held to “not change the conclusion that there is confusing similarity”); Disney Enterprises, Inc. v. ORIENTS RUGS & MORE / NA, NAF Claim No. 1555495 (2014) (Inserting the word “India” after the famous DISNEY trademark does “not diminish the similarity between the domain name and Complainant’s mark.”).
Similar to the above-cited decisions, the Respondent in the present dispute initially attracts consumers by using an identical copy of the NIKE Mark followed by the additional words “school innovation fund” thereby making internet users think that the domain is owned by NIKE and that it reliably leads to one of its legitimate sites. Confusion is made all the more likely by the fact that NIKE is part of a partnership which actually operates an entity called the Nike School Innovation Fund and its partner, the PBACI, formerly owned the <NikeSchoolInnovationFund.org> domain before it inadvertently expired and was quickly acquired by Respondent.
Finally, the addition of the .org gTLD does nothing to alleviate confusion between the NIKE Mark and the <NikeSchoolInnovationFund.org> domain. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (“Indeed, it is well-settled that the mere addition of a TLD to a famous trademark does not avoid confusing similarity”); Reese v. Morgan, NAF Claim No. 917029 (2007) (Finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent has no rights or legitimate interest in the Disputed Domain Under Policy ¶4(a)(ii).
Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests in the <NikeSchoolInnovationFund.org> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). The <NikeSchoolInnovationFund.org> domain presently resolves to what appears to be the legitimate content for the Nike School Innovation Fund website. Further, email going to the address listed at this site is currently going to Respondent. More importantly, this website content could change at any moment as it is not under NIKE’s control. In a very closely analogous situation, the use of a confusingly similar domain to redirect visitors to a complainant’s own website has been held not to provide the respondent with any rights or legitimate interest in the domain. In PersonalizationMall.com v. Ryan G Foo / PPA Media Services, NAF Claim No. 1563873 (2014), the respondent’s disputed domain resolved to complainant’s own web page. The Panel found that “Respondent is not using the disputed domain name <personalisationmall.com> for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(ii), as the disputed domain name resolves to Complainant’s own website, through means over which Complainant has no control.” Id., citing, Direct Line Ins. plc v. Low-cost-domain, NAF Claim No. 1337658 (2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) . . .”). The facts of the present case similarly provide the Respondent with no rights or legitimate interest in the <NikeSchoolInnovationFund.org> domain.
Next, by virtue of its copying legitimate NIKE content, Respondent’s website makes extensive use of NIKE imagery and creates the appearance of the legitimate NIKE School Innovation Fund website. Such imagery includes the famous NIKE “Swoosh” logo, copyrighted web graphics which were part of the genuine site, and images of people participating in activities related to the NIKE School Innovation Fund. Such use of copyrighted and other brand imagery to convey the false impression that a website is associated with and controlled by a brand owner has been found to be evidence that a respondent did not have a bona fide interest in disputed domains. See, e.g., King.com Limited and Midasplayer.com Ltd. v. Whoisguard, Inc. / Raymond Tan, WIPO Case No. D2013-1986 (No bona fide offering of products or services found where “the websites associated to each of the disputed domain names show several of Complainants’ copyrighted graphical elements and trademarks and … such websites are primarily set up for commercial gain to take unfair advantage of Complainant’s trademarks and reputation.”)
Furthermore, upon information and belief, Respondent is not commonly known by any of NIKE’s Marks, nor does Respondent operate a legitimate business or other organization under such marks or names and does not own any trademark or service mark rights in these names. Policy ¶4(c)(ii). See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <NikeSchoolInnovationFund.org> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Respondent’s website could easily be used for fraud or the improper gathering of personal information if visitors contact Respondent through the “Contact” feature. In any event, Respondent’s site does not fit into any accepted notion of fair use such as comment, criticism, political, etc. Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 (Use of the PORSCH trademark, in a domain name, to attract potential customers to respondent’s auto loan business serving all vehicle brands was commercial and did not constitute a legitimate or fair use of the domain. Id.
Lastly, NIKE’s prior registration of the <NikeSchoolInnovationFund.org> domain name and Respondent’s registration of the domain immediately after it was inadvertently allowed to expire are factors in considering Respondent’s rights or legitimate interests in the name. See, Kevco Intellectual Properties LLC v. Jason Healey, NAF Claim No. 1560838 (2014) (“The Panel finds that Respondent registered the <baddassnutrition.com> domain name only upon expiration of the domain name, and therefore the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), quoting In Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., NAF Claim No. 95685 (2000)).”
Respondent Registered The <NikeSchoolInnovationFund.org> In Bad Faith Under Policy ¶4(a)(iii).
The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See, Policy ¶4(b)(iv).
Respondent intentionally used the NIKE Mark without consent from NIKE. Respondent was put on actual notice of NIKE’s rights in its world-famous NIKE Mark through its extensive and worldwide prior use thereof as well as its various trademark registrations which predate the creation of the <NikeSchoolInnovationFund.org>. Nike, Inc. v. Private Registrant / A Happy Dreamhost Customer, NAF Claim No. 1567022 (2014) (Panel finds actual notice in response to claim that “it is inconceivable that Respondent could have registered the domain name <nikeqa.com> without actual … knowledge of Complainant's rights in the mark”). Moreover, the content on Respondent’s website, namely the extensive use of the NIKE Mark and NIKE’s copyrighted imagery, reveals that Respondent has actual knowledge of the Mark and is purposefully trading on the Mark. Therefore, Respondent knowingly and intentionally registered and is using the <NikeSchoolInnovationFund.org> domain in violation of NIKE’s rights in its Mark.
Further, the use of the <NikeSchoolInnovationFund.org> domain to display content that is identical to the former Nike School Innovation Fund website content under this domain reinforces the fact that Respondent knew of NIKE and intentionally sought to violate the rights in its NIKE Mark. See, PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888 (“Further evidence of Respondent's awareness of Complainant's existence and business is clear from the immediate redirection of users who visit the Disputed Domain Name to Complainant's own website. * * * There is no conceivable explanation by which Respondent could have registered the Disputed Domain Name in good faith.”).
Also, the use of identical webs content only serves to increase customer confusion that the domain name is somehow licensed or controlled by NIKE. Starwood Hotels & Resorts Worldwide Inc. v. WhoisGuard, Inc. / Lyle Young, WIPO Case No. D2014-1051 (By redirecting its domain to complainant’s own website “Respondent has exploited the Complainant’s goodwill for financial gain by causing confusion. This demonstrates the Respondent’s opportunistic bad faith in registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy in the Panel’s view.”)
Even if Respondent is not currently obtaining commercial gain from its use of the website at the <NikeSchoolInnovationFund.org> domain it may intend to do so in the future by confusing internet users who visit this site. Association Sportive Monaco Football Club v. Dr Pierre de Kerangal, ADR.eu Case No. 100813 (2014) (“The Panel notes that the website at the disputed domain name currently redirects users to the website of Complainant. However, such passive holding of the website does not prevent the Panel from finding registration and use in bad faith … [and this] indicates that Respondent possibly registered the Disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant….”)
As noted above, the <NikeSchoolInnovationFund.org> domain was previously owned by the PBACI, one of NIKE’s community service partners. Panels have not hesitated to find bad faith where a respondent takes advantage of a complainant’s inadvertent failure to renew a domain name. See, e.g., BAA plc v. Spektrum Media Inc., WIPO Case No. D2000-1179 (“Accordingly, the Panel finds that Respondent has registered and is using the <baddassnutrition.com> domain name in bad faith pursuant to Policy ¶4(a)(iii)”); Kevco Intellectual Properties, supra, (“Respondent is not making an active use of the disputed domain name, showing bad faith under Policy ¶4(a)(iii).”); Sotheby's v. Mizuno, Hiroyuki, NAF Claim No. 1439175 (2012) (Held that respondent’s opportunistic registration of the domain after complainant inadvertently let it expire is further evidence of bad faith registration and use of the domain).
Finally, Respondent has listed false or non-functioning information in the Whois record for the <NikeSchoolInnovationFund.org> domain. NIKE’s representative attempted to contact the Respondent on September 8, 2014 at the elah.blake@hotmail.com email address which was listed before Respondent began using a whois privacy service. However, NIKE received a notice indicating that the message was undeliverable because Respondent’s email address was not recognized. Further, the address listed in the whois record, “Dr. Stone Way 556, Delaware 64523,” does not exist. Finally, the phone number listed “+1.66254564312” has far too many digits for a US-based number and does not reach any working phone when called. Such questionable Whois information for the <NikeSchoolInnovationFund.org> domain lends further evidence to support the claim that Respondent acted in bad faith. See, e.g., WordPress Foundation v. Guo Lei aka Lei Guo, WIPO Case No. D2011-0932 (“A domain name registrant has a duty to act honestly. Past UDRP panels have consistently held that the deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason and its subsequent use is bad faith (e.g., Luxottica Group S.p.A. , Luxottica Fashion Brillen Vertriebs GmbH v. Rett Walters, WIPO Case No. D2011-0297; ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; FAROUK SYSTEMS INC. v. DAVID, WIPO Case No. D2009-1245). The Respondent’s contact address and facsimile are ineffective and are probably fictitious. The Panel is of the view that the use of such particulars to register the Disputed Domain Name corroborates the finding of bad faith above.”).
Summation
All of the facts in this case strongly demonstrate that Respondent has registered and used the <NikeSchoolInnovationFund.org> domain in bad faith. The worldwide fame of the NIKE trademarks and their use in the <NikeSchoolInnovationFund.org> domain, the content on Respondent’s website, and the opportunity for commercial activity on that site, all indicate that all the elements of Policy ¶4(a) have been satisfied.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses the NIKE mark in connection with its sporting goods retail stores and apparel. Complainant owns the NIKE mark through its numerous trademark registrations with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1214930, registered Nov. 2, 1982). Such registrations are normally sufficient to establish rights in the mark under Policy ¶4(a)(i), See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)). Accordingly, Complainant’s USPTO registrations satisfy the requirements of Policy ¶4(a)(i) and establish its rights.
Complainant claims the <nikeschoolinnovationfund.org> domain name is confusingly similar to Complainant’s NIKE mark because Respondent has simply added the descriptive phrase “School innovation fund” to the mark (a name Complainant also uses). The disputed domain name also differs from the mark by the addition of the generic top-level domain (“gTLD”) “.org.” Adding terms to a mark does not prevent a finding of confusing similarity. Adding a gTLD is irrelevant to a Policy ¶4(a)(i) analysis. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Accordingly, Respondent’s <nikeschoolinnovationfund.org> domain name is confusingly similar to Complainant’s NIKE mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <nikeschoolinnovationfund.org> domain name. The WHOIS information currently identifies “Elah Blake” as the registrant of the disputed domain name. Respondent failed to submit a response refuting Complainant’s contentions. Given the record, it seems clear Respondent is not commonly known by the <nikeschoolinnovationfund.org> domain name pursuant to Policy ¶4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant claims Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to display Complainant’s content from when Complainant owned the domain name. This clearly does not constitute a bona fide offering of goods or services or the making of a legitimate noncommercial or fair use of the disputed domain name in such circumstances. Respondent has not provided any bona fide offering of goods or services or made a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Furthermore, Respondent registered the disputed domain name using a WHOIS privacy service. This means Respondent has not publicly associated itself with the domain name, which means it cannot acquire any rights from owing the domain name. Likewise, Respondent is using Complainant’s pirated content. Such a use does not give Respondent any rights because of its use of the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent might be using the disputed domain name to attract confused Internet users to its own website for commercial gain. The domain name resolves to a website that appears have the same content Complainant had before its domain name registration lapsed. Under such circumstances, Respondent is able to capitalize on any Internet user interaction with the website. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Email addressed to Complainant is delivered to Respondent (and we have no idea of the contents of this email…or its volume). Therefore, it seems more likely than not Respondent uses the disputed domain name for commercial gain, which is evidence of bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent had actual notice of Complainant’s rights in the mark. This seems likely not only because of Complainant’s mark’s fame, but because Respondent copied Complainant’s previous web site. It would strain this Panel credulity to find anything other than Respondent had actual notice of Complainant’s rights in the NIKE mark. This constitutes bad faith 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. This Panel has repeatedly held this raises the rebuttable presumption of bad faith in the commercial context. Respondent has done nothing to rebut this presumption. Furthermore, Respondent’s contact information was incorrect even once the privacy service was dropped by the registrar (which occurred when this proceeding was commenced). Given Respondent’s obligation to provide correct WHOIS information and its unexplained failure to do so, this also raises the rebuttable presumption of bad faith. Nothing has been done to rebut either presumption. Therefore, the Panel finds the disputed domain name was registered and used in bad faith under the penumbra of Policy ¶4(b).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <nikeschoolinnovationfund.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 4, 2014
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