NIKE, Inc. and Nike Innovate, C.V. v. Abigailli / CorieBlake / Corie Blake / ElizabethJenkins / Elizabeth Jenkins / LucyFuller / Lucy Fuller / JohnSanders / john Sanders / Richardgourdine / rosetaylor / MarkoKeel / Marko Keel / simonfortier / simon fortier / JustinButler / Justin Butler
Claim Number: FA1611001701887
Complainant is NIKE, Inc. and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Abigailli / CorieBlake / Corie Blake / ElizabethJenkins / Elizabeth Jenkins / LucyFuller / Lucy Fuller / JohnSanders / john Sanders / Richardgourdine / rosetaylor / MarkoKeel / Marko Keel / simonfortier / simon fortier / JustinButler / Justin Butler (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nikefactorystoreonline.com>, registered with Todaynic.com, Inc.; and <nikefactoryonline.com>, <nikefactorystore.net>, <nikefactorystoreonline.net>, <nikefactorystoresydney.com>, <cheapnikesoccerboots.com>, <nikestoreuk.com>, <officialnikefactorystore.com>, and <wholesalenikeshoe.com>, registered with Eranet International Limited.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2016; the Forum received payment on November 7, 2016.
On November 14, 2016, Todaynic.com, Inc. confirmed by e-mail to the Forum that <nikefactorystoreonline.com> is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the name. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.com, 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 November 17, 2016, Eranet International Limited confirmed by e-mail to the Forum that the <nikefactoryonline.com>, <nikefactorystore.net>, <nikefactorystoreonline.net>, <nikefactorystoresydney.com>, <cheapnikesoccerboots.com>, <nikestoreuk.com>, <officialnikefactorystore.com>, and <wholesalenikeshoe.com> domain names are registered with Eranet International Limited and that Respondent is the current registrant of the names. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On November 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@nikefactoryonline.com, postmaster@nikefactorystore.net, postmaster@nikefactorystoreonline.com, postmaster@nikefactorystoreonline.net, postmaster@nikefactorystoresydney.com, postmaster@cheapnikesoccerboots.com, postmaster@nikestoreuk.com, postmaster@officialnikefactorystore.com, and postmaster@wholesalenikeshoe.com. Also on November 21, 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 December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the NIKE mark pursuant to its United States Patent and Trademark Office (“USPTO”) registrations (e.g., Reg. No. 978,952, registered Feb. 19, 1974). See Compl., at Attached Ex. D. Respondent’s domain names are confusingly similar to the NIKE mark because they each incorporate the mark entirely while adding generic, geographically descriptive, or descriptive terms and either the “.com” or “.net” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the domain names. Respondent is not known by the subject domain names, nor does Respondent lawfully conduct any business using the name reflected in the subject domain name. Instead, Respondent is known as “Zhuhai Yingxun” and “Keji Limited.” See Compl., at Attached Ex. A. Moreover, Respondent is not licensed to use the NIKE Mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use the NIKE Mark. Further, the domain names resolve to a directly competitive website—impersonating/passing itself off as Complainant and purporting to sell NIKE branded goods. Compare Compl., at Attached Ex. C (Complainant’s online offerings), with Compl., at Attached Ex. G (resolving websites to disputed domain names). Such use does not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use.
3. Respondent registered and used the domain names in bad faith. Respondent has exhibited a pattern of bad faith registrations under Policy ¶ 4(b)(ii) by registering several infringing domain names in the instant case. Respondent’s passing off behavior evinces Policy ¶ 4(b)(iv) bad faith because it does so for profit. Lastly, Respondent had actual knowledge of the NIKE mark and Complainant’s rights when registering and using the domain names, which is bad faith under Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent did not submit a Response.
1. Respondent’s <nikefactoryonline.com>, <nikefactorystore.net>, <nikefactorystoreonline.com>, <nikefactorystoreonline.net>, <nikefactorystoresydney.com>, <cheapnikesoccerboots.com>, <nikestoreuk.com>, <officialnikefactorystore.com>, <wholesalenikeshoe.com> domain names are confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nikefactoryonline.com>, <nikefactorystore.net>, <nikefactorystoreonline.com>, <nikefactorystoreonline.net>, <nikefactorystoresydney.com>, <cheapnikesoccerboots.com>, <nikestoreuk.com>, <officialnikefactorystore.com>, <wholesalenikeshoe.com> domain names.
3. Respondent registered or used the <nikefactoryonline.com>, <nikefactorystore.net>, <nikefactorystoreonline.com>, <nikefactorystoreonline.net>, <nikefactorystoresydney.com>, <cheapnikesoccerboots.com>, <nikestoreuk.com>, <officialnikefactorystore.com>, <wholesalenikeshoe.com> domain names 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 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 Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” 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.” The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them as a single entity in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that the WHOIS information for each of the domain names is merely an alias for the same person, Respondent. Further, the domain names resolve to the same content. See Compl., at Attached Ex. G.
Complainant, NIKE Inc., has used the NIKE mark in connection with its sports apparel business for over 40 years. Complainant claims to have rights in the mark based on registration of the mark with the USPTO as well as other international trademark agencies (e.g., Reg. No. 978,952, registered Feb. 19, 1974). See Compl., at Attached Ex. D. Panels have held, and this Panel holds, that proof of registration of a mark with the USPTO is sufficient to demonstrate rights in a mark. See F Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant next contends that Respondent’s domain names are confusingly similar to the NIKE mark because they each incorporate the mark entirely while adding generic, geographically descriptive, or descriptive terms and either the “.com” or “.net” gTLD. Panels have held that generic or descriptive words added to a mark in a domain do not alleviate confusing similarity for purposes of Policy ¶ 4(a)(i). See Disney Enter. v. Kudrna, FA 686103 (Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)). Geographically descriptive terms also have been considered as holding no distinguishing value. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). Additionally, “.com” and “.net” are irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Therefore, the Panel finds that the changes Respondent has made to the NIKE mark create confusing similarity pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the domain names. In arguing under Policy ¶ 4(c)(ii), Complainant contends that Respondent is not known by the subject domain names, nor does Respondent lawfully conduct any business using the name reflected in the subject domain name. Instead, Respondent was first known as “Zhuhai Yingxun” and “Keji Limited.” See Compl., at Attached Ex. A (WHOIS). Moreover, Respondent is not licensed by Complainant to use the NIKE Mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use the NIKE Mark. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and lack of contrary evidence in the record. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). This Panel finds that Respondent has not been commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant argues that the domain names resolve to a directly competitive website—impersonating/passing itself off as Complainant and purporting to sell NIKE branded goods. Compare Compl., at Attached Ex. C (Complainant’s online offerings), with Compl., at Attached Ex. G (resolving websites to disputed domain names). Passing off as a complainant does not represent rights and legitimate interests. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the
complainant’s website). The Panel agrees that Respondent’s resolving website is substantially similar / nearly identical to Complainant’s own website and offerings, and therefore that Respondent has passed itself off as Complainant, evincing no bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent registered and used the domain names in bad faith. Complainant contends that Respondent has exhibited a pattern of bad faith registrations under Policy ¶ 4(b)(ii) by registering several infringing domain names in the instant case. Registration of several infringing domain names can impute bad faith. See Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>,<radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Here, while Respondent has registered nine domain names that are confusingly similar to Complainant’s NIKE mark, the Panel finds that bad faith is evident under Policy ¶ 4(b)(ii).
Respondent’s domain includes the NIKE mark, the NIKE mark is displayed on the website, and NIKE products are purportedly given away on the website resolving from the domain name. See Compl., at Attached Ex. G. Complainant believes this indicates that Respondent is attempting to pass itself off as Complainant and create a likelihood of confusion in the minds of consumers who are seeking Complainant’s legitimate products or websites. Panels have found a respondent to have acted in bad faith under Policy ¶ 4(b)(iv) where a respondent used a complainant’s logos and trademarks at a resolving website. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent is attempting to pass itself off as Complainant through use of Complainant’s marks, and finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the NIKE mark based on the international fame of the mark and Respondent’s use of Complainant’s marks on the resolving website—namely, passing itself off as Complainant. Panels tend to look to a totality of circumstances in finding actual knowledge. 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”). This Panel holds that Respondent’s actual knowledge of Complainant’s rights in the mark at the time of registration establishes Respondent’s bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikefactoryonline.com>, <nikefactorystore.net>, <nikefactorystoreonline.com>, <nikefactorystoreonline.net>, <nikefactorystoresydney.com>, <cheapnikesoccerboots.com>, <nikestoreuk.com>, <officialnikefactorystore.com>, and <wholesalenikeshoe.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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