Nike, Inc. v. Recaptured.com This Domain Is For Sale
Claim Number: FA1509001637275
Complainant is Nike, Inc. (“Complainant”), represented by Laura C. Gustafson of Pillsbury Winthrop Shaw Pittman, LLP, California, United States. Respondent is Recaptured.com This Domain Is For Sale (“Respondent”), Delaware, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nlke.com>, registered with eNom, Inc.
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.
Complainant submitted a Complaint to the Forum electronically on September 10, 2015; the Forum received payment on September 14, 2015.
On September 11, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <nlke.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@nlke.com. Also on September 22, 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 October 15, 2015, 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" 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 is a globally well-known company and the world’s leading seller of sports shoes and sports apparel, with retail stores throughout the United States and countries around the world. Nike owns and has been using its NIKE marks for over forty years. Complainant has registered the NIKE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 978,952, registered February 19, 1974), which demonstrates its rights in its mark under Policy ¶ 4(a)(i). The <nlke.com> domain name is confusingly similar to Complainant’s mark as it merely substitutes the letter “i” with the letter “l,” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name resolves to a website which solicits visitors to take a survey regarding NIKE. Further, Respondent’s typosquatting behavior indicates a lack of rights or legitimate interests in the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a false association with Complainant and a likelihood of confusion with the NIKE mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website. Second, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Finally, Respondent has engaged in the tactic of typosquatting, thereby showing bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Nike, Inc., is a globally well-known company and a leading seller of sports shoes and sports apparel worldwide. Nike owns rights in the NIKE marks under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 978,952, registered February 19, 1974).
Respondent, Recaptured.com This Domain Is For Sale, registered the <nlke.com> domain name on September 22, 2003. The domain name resolves to a website which solicits visitors to take a survey regarding NIKE.
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.”).
Nike owns rights in the NIKE marks under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 978,952, registered February 19, 1974). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The <nlke.com> domain name is confusingly similar to Complainant’s NIKE mark under Policy ¶ 4(a)(i) as it merely substitutes the letter “i” with the letter “l,” and adds the gTLD “.com.” Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <nlke.com> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use its mark. The WHOIS information lists “RECAPTURED.COM THIS DOMAIN IS FOR SALE.” as registrant. 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).
Respondent is not using the <nlke.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ (c)(iii). Respondent’s disputed domain name resolves to a website which solicits visitors to take a survey regarding NIKE. Past panels have found that a respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users. See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Further, Respondent’s typosquatting behavior shows a further lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Respondent has registered and is using the <nlke.com> domain name in bad faith. First, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a false association with Complainant and a likelihood of confusion with the NIKE mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website. Specifically, Respondent is using a confusingly similar misspelling of NIKE to draw visitors to its unauthorized site, presumably generating pay-per-click revenue and perhaps further revenue or other consideration if a visitor takes the “Nike” survey available at Respondent’s website. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) where a respondent’s disputed domain name resolves to a websites that solicits the completion of a survey. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (finding that a domain name which resolves to a website which solicits Internet users for the completion of surveys is evidence of bad faith due to an attraction for commercial gain). Accordingly, Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Second, Complainant Respondent registered the <nlke.com> domain name with actual knowledge of Complainant’s mark. See 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). Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent engaged in typosquatting, thereby showing bad faith registration and use under Policy ¶ 4(a)(iii).. Past panels have found bad faith under Policy ¶ 4(a)(iii) where a respondent’s disputed domain name was merely a typosquatted version of the complainant’s mark. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nlke.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 29, 2015
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