Nike, Inc. v. Michael Julian, d/b/a
Michael Julian & Co., LLC
Claim
Number: FA0501000409733
Complainant is Nike, Inc. (“Complainant”), represented
by Philip Davison, One Bowerman Drive, DF/4, Beaverton,
OR 97005. Respondent is Michael Julian, d/b/a Michael Julian &
Co., LLC (“Respondent”), New York, NY 10001.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nikestuff.com>, registered with Register.com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 26, 2005.
On
January 27, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <nikestuff.com> is registered with Register.com
and that Respondent is the current registrant of the name. Register.com has
verified that Respondent is bound by the Register.com registration agreement
and has thereby agreed to resolve domain name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
January 28, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 17, 2005 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@nikestuff.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <nikestuff.com>
domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or
legitimate interests in the <nikestuff.com> domain name.
3. Respondent registered and used the <nikestuff.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Nike, Inc., is the world’s leading sports and fitness company. Complainant designs, manufactures and
markets a broad range of athletic and athletic leisure footwear, apparel and
equipment.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the NIKE mark (Reg. No. 1,924,353 issued October 2, 1995;
Reg. No. 2,025,926 issued December 24, 1996; Reg. No. 2,239,077 issued April
13, 1999; Reg. No. 1,945,654 issued January 2, 1996; Reg. No. 1,153,938 issued
May 12, 1981; Reg. No. 1,243,248 issued June 21, 1983; Reg. No. 1,214,930
issued November 2, 1982; Reg. No. 1,277,066 issued May 8, 1984; Reg. No.
978,952 issued February 19, 1974; and Reg. No. 2,196,735 issued October 13,
1998) in connection with footwear, apparel, equipment and retail store
services, web-based communication and informational services, and other related
services. Complainant has used this
mark in commerce since at least as early as June 1971.
Respondent
registered the <nikestuff.com> domain name on December 10,
2004. Respondent is not using the
domain name in connection with any goods or services, but offers the domain name
for sale to the general public, declaring “Asking price: $10,000.”
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."
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.
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.
Complainant
established that it has rights to the NIKE mark as evidenced by the
registrations with the United States Patent and Trademark Office and through
continued use of its mark in commerce over the last thirty-four years. See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct.
18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to
demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis
for making the Complaint in the first place); see also Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”).
The <nikestuff.com>
domain name registered by Respondent is confusingly similar to Complainant’s
NIKE mark because the domain name incorporates Complainant’s mark in its
entirety and simply adds the generic top-level domain (“gTLD”) “.com” and the
generic term, “stuff.” The mere
addition of a gTLD and a generic term, does not negate the confusing similarity
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a generic
word or term); see also Sony
Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
Therefore,
Complainant has established that the disputed domain name, <nikestuff.com>,
is confusingly similar to Complainant’s NIKE mark pursuant to Policy ¶ 4(a)(i).
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made in the Complaint as
true. See 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.”); see also Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that
in the absence of a Response the Panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that Complainant’s allegations are true
unless clearly contradicted by the evidence).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
not authorized or licensed by Complainant to use the NIKE mark in the domain
name. Moreover, no evidence before the
Panel suggests that Respondent is commonly known by the domain name pursuant to
Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
Furthermore, the
<nikestuff.com> domain name is confusingly similar to
Complainant’s NIKE mark and is used to direct Internet users to a website that
offers the domain name registration for sale.
Such offers have consistently been found to be neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb.
Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when
one has made no use of the websites that are located at the domain names at
issue, other than to sell the domain names for profit); see also Mothers
Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, Respondent’s apparent willingness to
dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name with the
intention of selling its rights).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Respondent has
manifested an intent to sell the disputed domain name registration as the
website declares “Asking price: $10,000.”
Given the long standing use of the NIKE mark and the fame associated
with the mark in the public’s mind, it is more likely than not Respondent’s
future sale of the domain name registration is aimed at the deep pockets of
Complainant’s business or Complainant’s competitors. Without the benefit of a Response, the Panel finds that the
circumstances sufficiently indicate that Respondent acquired the domain name
primarily to sell the registration to Complainant or Complainant’s competitors
for a value in excess of out-of-pocket expenses directly related to the domain
name pursuant to Policy ¶ 4(b)(i). See Pocatello
Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat.
Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name]
bad faith is some accompanying evidence that the domain name was registered
because of its value that is in some way dependent on the trademark of another,
and then an offer to sell it to the trademark owner or a competitor of the
trademark owner"); see also Booz-Allen
& Hamilton Inc. v. Servability Ltd,
D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain
name dealer, rejected Complainant’s nominal offer of the domain in lieu of
greater consideration); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name for valuable consideration
in excess of any out-of-pocket costs).
Additionally,
Respondent’s registration of the disputed domain name, a domain name that
wholly incorporates Complainant’s well-known worldwide registered mark and
simply adds a generic term, suggests that Respondent knew of Complainant’s
rights in the NIKE mark. Thus, the
Panel finds that Respondent likely chose the <nikestuff.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith); see also Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof”).
Finally,
Complainant has established 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 <nikestuff.com> domain name be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 15, 2005
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