Nike Innovate C.V. v. Loetitia Tibi
Claim Number: FA1808001803904
Complainant is Nike Innovate C.V. (“Complainant”), represented by Emma Pettipher of Stobbs, United Kingdom. Respondent is Loetitia Tibi (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jordanretro13.us>, <nikeairmax90womens.us>, <nikecheapshoesoutlet.us>, <nikefactorystore.us>, and <nikeshoesstore.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2018; the Forum received payment on August 29, 2018.
On August 30, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <jordanretro13.us>, <nikeairmax90womens.us>, <nikecheapshoesoutlet.us>, <nikefactorystore.us>, and <nikeshoesstore.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2018 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@jordanretro13.us, postmaster@nikeairmax90womens.us, postmaster@nikecheapshoesoutlet.us, postmaster@nikefactorystore.us, and postmaster@nikeshoesstore.us. Also on September 4, 2018, 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 September 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a worldwide marketer of footwear, clothing, headgear, bags, eyewear, watches as well as other electronic products and sports equipment.
Complainant holds a registration for the NIKE mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,924,353, registered October 3, 1995, and the JORDAN mark, which is on file with the United Kingdom Intellectual Property Office (“UKIPO”) as Registry No. 2,483,611, filed March 31, 2008.
Respondent registered the domain names identified below on the dates indicated for each:
|
<jordanretro13.us> |
December 15, 2015. |
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<nikeairmax90womens.us> |
December 16, 2015 |
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<nikecheapshoesoutlet.us> |
May 5, 2016 |
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<nikefactorystore.us> |
December 16, 2015 |
|
<nikeshoesstore.us> |
May 5, 2016 |
The <jordanretro13.us> domain name is confusingly similar to Complainant’s JORDAN mark.
The domain names <nikeairmax90womens.us>, <nikecheapshoesoutlet.us>, <nikefactorystore.us>, and <nikeshoesstore.us> are confusingly similar to Complainant’s NIKE mark.
Respondent has not been commonly known by the any of the domain names.
Respondent is not authorized to use Complainant’s NIKE or JORDAN marks.
Respondent has no rights to or legitimate interests in any of the domain names.
Respondent’s registration of a number of many domain names, all of them confusingly similar to Complainant’s marks, demonstrates a pattern of bad faith.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel may draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the NIKE and JORDAN marks sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the marks with national trademark authorities, the USPTO and UKIPO. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in it for purposes of the Policy).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s domain names, <nikecheapshoesoutlet.us>, <nikefactorystore.us>, <nikeairmax90womens.us> and <nikeshoesstore.us> are confusingly similar to Complainant’s NIKE mark. Each of the domain names contains the mark in its entirety, merely adding one of the descriptive or generic terms “airmax90,” “womens,” “cheap,” “shoes,” “outlet,” “factory,” and “store,” each of which can be taken to relate to an aspect of Complainant’s business, plus a country code Top Level Domain (“ccTLD”). These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term and a gTLD to the mark of another in creating a domain name was insufficient to distinguish one from the other under Policy ¶ 4(a)(i)). See also Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018):
Respondent’s … domain name is confusingly similar to the … mark as Respondent merely adds the descriptive term “…” and the “.us” ccTLD to the mark.
Likewise, Respondent’s <jordanretro13.us> domain name is confusingly similar to Complainant’s JORDAN mark in that it incorporates the mark in its entirety while adding the descriptive term “retro13” (relating to one of Complainant’s products) and a “.us” ccTLD.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶¶ 4(c) (i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the domain names <nikeairmax90womens.us>, <nikecheapshoesoutlet.us>, <nikefactorystore.us>, <nikeshoesstore.us> or <jordanretro13.us>, and that Complainant has not licensed or otherwise authorized Respondent to use the NIKE or JORDAN marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Loetitia Tibi,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of UsDRP Policy ¶ 4(c)(iii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <jordanretro13.us>, <nikeairmax90womens.us>, <nikecheapshoesoutlet.us>, <nikefactorystore.us> and <nikeshoesstore.us> domain names to pass itself off as Complainant online in order to facilitate the sale of counterfeit goods for its financial gain. This employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iv) such as would confirm in Respondent rights to or legitimate interests in any of them as provided in those subsections of the Policy. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum August 11, 2017):
Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s … [mark] … and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant …. [Therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name [under the provisions of Policy ¶¶ 4(c)(ii) or (iv)].
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration of five (5) separate domain names, all of which are confusingly similar to one or the other of Complainant’s NIKE or JORDAN marks, adequately demonstrates, under Policy ¶ 4(b)(ii), a pattern of bad faith in registering and using them. See Radisson Hotels International, 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 … [four] … domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).
We are also convinced by the evidence that Respondent’s employment of the domain names, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this further shows Respondent’s bad faith in registering and using them. See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum December 22, 2014):
As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).
See also Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding that a respondent’s use of a domain name to facilitate the offering of counterfeit versions of a UDRP complainant’s software online created a likelihood of confusion among internet users as to the possibility of that complainant’s affiliation with the domain name and allowed that respondent to profit from such confusion, thus demonstrating bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <jordanretro13.us>, <nikeairmax90womens.us>, <nikecheapshoesoutlet.us>, <nikefactorystore.us> and <nikeshoesstore.us> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 28, 2018
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