Nike, Inc. v. Jordan McLellan
Claim Number: FA1505001621343
Complainant is Nike, Inc. (“Complainant”), represented by Laura C. Gustafson of Pillsbury Winthrop Shaw Pittman, LLP, California, USA. Respondent is Jordan McLellan (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jordantraining.com>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2015; the Forum received payment on May 28, 2015.
On May 27, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jordantraining.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2015 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@jordantraining.com. Also on June 4, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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
Complainant made the following contentions
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture and supply of sporting shoes and apparel.
2. Complainant has established rights in the AIR JORDAN mark through extensive use, fame, and registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,370, 283 registered November 12, 1985). The AIR JORDAN mark is one of a family of marks including JORDAN, AIR JORDAN AND MICHAEL JORDAN (“the JORDAN marks”.) which are also established on the evidence.
3. The disputed domain name was created on June 6, 2011. It is apparently used to host a parked website that displays generic links to third party websites, but otherwise Respondent has failed to make active use of the disputed domain name for an extended period of time.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims that it has rights in the AIR JORDAN mark through extensive use, fame, and registration of the mark with the USPTO (Reg. No. 1,370, 283 registered November 12, 1985) and has submitted evidence to that effect. The AIR JORDAN mark is one of a family of marks including JORDAN, AIR JORDAN AND MICHAEL JORDAN (“the JORDAN marks”.) which are also established by evidence that the Panel accepts. The Panel further notes Complainant’s extensive listing of marks related to the AIR JORDAN mark and the JORDAN marks in general registered with trademark agencies throughout the world. See Complainant’s Att. Ex. B. Panels regularly determine that a Complainant has sufficiently established its rights in a mark through registration of a mark with a trademark agency such as the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel therefore finds that Complainant has sufficiently demonstrated rights in the AIR JORDAN mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <jordantraining.com> domain name is identical or confusingly similar to Complainant’s JORDAN marks. Complainant argues that Respondent’s disputed <jordantraining.com> domain name is nearly identical to Complainant’s JORDAN mark. Complainant urges that Respondent’s use of the generic term “training” in the disputed domain name does not prevent a finding of confusing similarity. Panels have found that merely adding a generic term to a disputed domain name does not prevent a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Further, the disputed domain is identical to Complainant’s line of products marketed under the name JORDAN TRAINING. See Complainant’s Att. Ex. F. Panels also regularly hold that the addition of a generic top-level domain name such as “.com” is not relevant to a determination of confusing similarity. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). The Panel accordingly finds that Respondent’s disputed <jordantraining.com> domain name is confusingly similar to Complainant’s JORDAN marks according to Policy ¶ 4(a)(i). That is so because the objective bystander would naturally assume that the domain name is referring to Complainant, its JORDAN marks and to goods and services supplied under those marks and used for training.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s JORDAN mark and to use it in its domain name with the addition only of the generic word “training”;
(b) Respondent registered the disputed domain name on June 6, 2011 and apparently uses it to host a parked website that displays generic links to third party websites, but otherwise Respondent has failed to make active use of the disputed domain name for an extended period of time;
(c) Respondent engaged in this conduct without the permission or authority of Complainant;
(d) Complainant submits that Respondent is not commonly known by the <jordantraining.com> domain name and does not own any trademarks that resemble the disputed domain name. The Panel notes the WHOIS information related to the disputed domain name which lists Registrant as “Jordan McLellan.” Panels have found that based on WHOIS and other information a respondent is not commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Although WHOIS information indicates that Respondent’s first name may be “Jordan,” panels have held that even when WHOIS information indicates that a respondent is commonly known by a disputed domain name that is not necessarily conclusive. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent’s apparent use of the disputed domain to host a parked website displaying generic sponsored links to third party websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Complainant’s Att. Ex. G. Use of a disputed domain name to host links to third party websites has been found not to constitute a bona fide offering of goods or services or a legitimate noncommercial of fair use. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Panels have also held that although a respondent does not choose which ads appear on a parked page a respondent is ultimately responsible for the content that appears. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”). The Panel concludes that Respondent’s use of the disputed domain name to host unrelated links to third-party websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).;
(f) WHOIS information indicates that Respondent registered the disputed domain name on June 6, 2011. Complainant’s Att. Ex. G shows that Respondent’s domain resolves to a parked webpage. Panels have held that failure to make an active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that the respondent’s failure to use the disputed domain name for several years was not 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)). The Panel therefore finds that Respondent’s inactive use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent deliberately chose the disputed <jordantraining.com> domain name in an attempt to attract users to its website by creating a likelihood of confusion between the disputed domain name and Complainant’s marks. Panels have found bad faith under Policy ¶ 4(b)(iv) where it was determined that a respondent took advantage of the confusing similarity between a mark and the disputed domain name. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). As the Panel determines that Respondent is attempting to profit commercially from a likelihood of confusion between the disputed domain name and Complainant’s marks, it finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant also contends that in light of the fame and notoriety of Complainant's AIR JORDAN mark, it is inconceivable that Respondent could have registered the <jordantraining.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel notes that arguments of bad faith based on constructive notice are generally regarded as irrelevant and that UDRP decisions have declined to find bad faith based on constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)."
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <jordantraining.com> domain name using the JORDAN mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jordantraining.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 6, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page