NIKE, Inc. and Nike Innovate C.V. v. Sune stilling
Claim Number: FA1604001672570
Complainant is NIKE, Inc. and Nike Innovate C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, United States. Respondent is Sune stilling (“Respondent”), Denmark.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nike.ro>, registered with ICI - ROTLD.
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 April 28, 2016; the Forum received payment on April 28, 2016.
On May 4, 2016, ICI - ROTLD confirmed by e-mail to the Forum that the <nike.ro> domain name is registered with ICI - ROTLD and that Respondent is the current registrant of the name. ICI - ROTLD has verified that Respondent is bound by the ICI - ROTLD 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 May 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2016 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@nike.ro. Also on May 5, 2016, 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 May 31, 2016, 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.
Complainant uses the NIKE mark in connection with its line of sports shoes, sports apparel, and sports equipment. Complainant has registered the NIKE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 978,952, registered Feb. 19, 1974), which establishes rights in the mark. See Compl., at Attached Ex. E. Respondent’s <nike.ro> domain name is identical to Complainant’s NIKE mark as it incorporates the mark in its entirety, and merely adds the country code top-level domain (“ccTLD”) “.ro.”
Respondent has no rights or legitimate interests in the <nike.ro> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <nike.ro> domain name. Rather, the domain name resolves to an inactive website displaying an error message. See Compl., at Attached Ex. H.
Respondent is using the <nike.ro> domain name in bad faith. First, Respondent registered the domain primarily for the purpose of selling it to Complainant for an amount in excess of Respondent’s out-of-pocket costs to acquire the domain. Second, Respondent is not making any active use of the website. Third, Respondent has engaged in opportunistic bad faith by registering a domain name so similar to the NIKE mark that it is inconceivable there would be any legitimate use by Respondent that would not infringe on Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the business of manufacturing and distributing sports shoes, sports apparel, and sports equipment.
2. Complainant has established registered trademark rights in the NIKE mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 978,952, registered Feb. 19, 1974).
3. The disputed <nike.ro> domain name was registered on January 1, 1996.
4. The domain name resolves to an inactive website displaying an error message.
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(f), 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 (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 uses the NIKE mark in connection with its line of sports shoes, sports apparel, and sports equipment. Complainant submits that it has registered the NIKE mark with the USPTO (e.g., Reg. No. 978,952, registered Feb. 19, 1974), and argues that its USPTO trademark registration is sufficient in establishing Policy ¶ 4(a)(i) rights in the NIKE mark. See Compl., at Attached Ex. E. The Panel accepts the evidence adduced by Complainant. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the NIKE mark.
The second issue that arises is whether the disputed <nike.ro> domain name is identical or confusingly similar to Complainant’s NIKE mark. Complainant argues that Respondent’s <nike.ro> domain name is identical to Complainant’s NIKE mark as it incorporates the mark, and merely adds the ccTLD “.ro.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See CloudFare, Inc. v. [Registrant], FA 624251 (Forum Aug. 1, 2015) (The inclusion of the .ro ccTLD “does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i)”). Therefore, the Panel finds that Respondent’s <nike.ro> domain name is identical to the NIKE mark under Policy ¶ 4(a)(i).
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 (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 (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 NIKE mark and to use it in its domain name without any amendment;
(b) Respondent registered the disputed domain name on January 1,1996;
(c) The domain name resolves to an inactive website displaying an error message.
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <nike.ro> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes Complainant’s Attached Exhibit A showing the WHOIS information regarding the disputed domain name, listing “Sune Stilling” as registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name);
(f) Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <nike.ro> domain name. Rather, Complainant contends that the domain name is not currently in use, and an error message is shown when Internet users attempt to access the website. See Compl., at Attached Ex. H. Panels have held that such non-use or passive holding of a domain name consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)). Therefore, the Panel finds that Respondent’s <nike.ro> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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 argues that Respondent registered the domain name primarily for the purpose of selling it to Complainant for an amount in excess of Respondent’s out-of-pocket costs to acquire the domain name. The Panel finds that this is a fair inference that can be drawn from the facts that the NIKE trademark and brand are very famous, the domain name is an exact copy of the trademark, Respondent has not used it for any legitimate purpose and could not have had a bona fide reason for registering and using it and that the only logical conclusion that can be drawn is that it was acquired for resale or rental at a profit. Panels have determined that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(i) where it offers to sell a disputed domain name for an amount in excess of its out-of-pocket costs to acquire the domain. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). As the Panel agrees with Complainant’s contention, it finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent’s passive holding of the <nike.ro> domain name constitutes bad faith under Policy ¶ 4(a)(iii). The Panel notes Complainant’s Exhibit H containing a screenshot of the website to which the <nike.ro> domain name resolves, showing an error message. Panels have found such inactive use to constitute bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel agrees that Respondent’s passive holding of the <nike.ro> domain name constitutes bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that there is no conceivable use of the disputed domain name by Respondent that would not infringe on Complainant’s NIKE mark, and that Respondent has engaged in opportunistic bad faith under Policy ¶ 4(a)(iii). Panels have found bad faith registration and use where it is inconceivable that the respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. See Indymac Bank v. Hogan, FA 220042 (Forum Jan. 28, 2004) (holding respondent’s passive holding of the domain name constitutes bad faith and stating “The Panel will not wait until the domain names have actually been used before finding bad faith because it is inconceivable that [r]espondent could use the domain names in a manner that would not infringe upon [c]omplainant’s mark…”); see also Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30,2000) (“The domain name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complaint suggests opportunistic bad faith.”). Therefore, the Panel finds that Respondent engaged in opportunistic bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <nike.ro> domain name using the NIKE mark and in view of the conduct that Respondent engaged in after its registration, Respondent registered and used the domain name 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 <nike.ro> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 1, 2016
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