NIKE, Inc. and Nike Innovate, C.V. v. Mattia Lumini and Yykk Snc
Claim Number: FA1606001679233
Complainant is NIKE, Inc. and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, United States. Respondent is Mattia Lumini and Yykk Snc (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikegoogle.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2016; the Forum received payment on June 13, 2016.
On June 14, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nikegoogle.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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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 email@example.com. Also on June 14, 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 July 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
1. Respondent’s <nikegoogle.com> domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nikegoogle.com> domain name.
3. Respondent registered and uses the <nikegoogle.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the NIKE mark in connection with its line of sports shoes, apparel, and equipment. Complainant has registered the NIKE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 978,952, registered Feb. 19, 1974).
Respondent registered the <nikegoogle.com> domain name on February 21, 2016.
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.”).
Preliminary Issue: Multiple Marks
The Panel notes that there are two trademarks at issue in the instant case: NIKE and GOOGLE. However, Google, Inc. has not been joined as a party, and thus has not provided any information asserting rights in the GOOGLE mark in this proceeding. In it’s Complaint, Complainant alleges “NIKE files this UDRP complaint with the knowledge and consent of Google, Inc. Further, Google, Inc. consents to the relief requested in the Complaint (i.e., the transfer of the subject domain name to NIKE).” However, an email attached to the Complaint as an exhibit indicates that Google requested that Respondent transfer the <nikegoogle.com> to Google in return for up to $100 in reimbursement for out-of-pocket registration fees.
The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Google, Inc. has not been joined as a Complainant in this matter and there is no nexus available through which Complainant can claim to have rights to the transfer of the <nikegoogle.com> domain name. Thus, the Panel dismisses the Complaint because Complainant has failed to establish rights in or to the GOOGLE mark per Policy ¶ 4(a)(i).
Having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nikegoogle.com> domain name REMAIN with Respondent.
Sandra J. Franklin, Panelist
Dated: July 15, 2016
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