Nike, Inc. v. BargainName.com c/o Domain
Admin
Claim
Number: FA0506000496731
Complainant, Nike, Inc. (“Complainant”), is
represented by Philip Davison, One Bowerman Drive, DF/4, Beaverton,
OR, 97005. Respondent is BargainName.com c/o Domain Admin
(“Respondent”), General Delivery, Georgetown, Grand Cayman, GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nikezone.com>, registered with Emily
Names Domains.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically June 14,
2005; the National Arbitration Forum received a hard copy of the Complaint June
16, 2005.
On
June 15, 2005, Emily Names Domains confirmed by e-mail to the National
Arbitration Forum that the domain name <nikezone.com> is
registered with Emily Names Domains and that Respondent is the current
registrant of the name. Emily Names
Domains verified that Respondent is bound by the Emily Names Domains registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
June 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 11,
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@nikezone.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
July 20, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <nikezone.com>, is confusingly similar to
Complainant’s NIKE mark.
2. Respondent has no rights to or legitimate
interests in the <nikezone.com> domain name.
3. Respondent registered and used the <nikezone.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 clothing and equipment
company. It designs, markets, and manufactures
a broad range of athletic apparel and equipment. Complainant’s NIKE mark is widely recognized to represent
Complainant’s goods and services.
Complainant has invested millions of dollars in advertising and
promoting the NIKE mark and has sold billions of dollars in merchandising.
Complainant
holds numerous federal trademark registrations for the NIKE mark with the
United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No.
978,952 issued February 19, 1974; Reg. No. 2,239,077 issued April 13,
1999). Additionally, Complainant has
used the NIKE mark worldwide and has registered the mark in numerous foreign
jurisdictions.
Respondent
registered the <nikezone.com> domain name August 12, 2004. Since that date, Respondent has made no use
of the domain name.
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
will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Paragraph 4(a)
of the Policy requires Complainant to 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.
Because
Complainant holds several registrations with the USPTO for its marks,
Complainant has presented a prima facie case of rights in the mark. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”). Without a response from Respondent, the
Panel lacks any evidence that would dispute Complainant’s presumption of
rights. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“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.”). Thus,
the Panel holds that Complainant has established rights for purposes of Policy
¶ 4(a)(i).
Complainant
argues that Respondent’s <nikezone.com> domain name is confusingly
similar to Complainant’s NIKE mark. In
registering the disputed domain name, Respondent incorporated Complainant’s
entire mark and added the generic top-level domain “.com” and the generic term
“zone.” Neither addition is sufficient
to distinguish Respondent’s domain name from Complainant’s famous mark. Thus, the Panel holds that the disputed
domain name is confusingly similar to Complainant’s marks 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 the complainant combined with a generic word or term); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the subject domain name incorporates the VIAGRA mark in its entirety,
and deviates only by the addition of the word “bomb,” the domain name is
rendered confusingly similar to the complainant’s mark); see also
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
Complainant
established by extrinsic proof in this proceeding that it has rights to and
legitimate interests in the mark contained within the disputed domain
name. Complainant also asserts that
Respondent does not have rights or legitimate interests in the <nikezone.com>
domain name. Complainant met its initial burden and established a prima
facie case. Consequently, the
burden of establishing rights or legitimate interests in the disputed domain
name shifts to Respondent. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO May 14, 2001):
Proving that the Respondent has no rights
or legitimate interests in respect of the Domain Name requires the Complainant
to prove a negative. For the purposes of this sub paragraph, however, it is
sufficient for the Complainant to show a prima facie case and the burden of
proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach
is for respondents to seek to bring themselves within one of the examples of
paragraph 4(c) or put forward some other reason why they can fairly be said to
have a relevant right or legitimate interests in respect of the domain name in
question.
Id.; see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once complainant
asserts that the respondent has no rights or legitimate interests with respect
to the domain, the burden shifts to the respondent to provide “concrete
evidence that it has rights to or legitimate interests in the domain name at
issue”).
The Panel will
analyze whether Respondent could meet its burden of establishing rights or
legitimate interests for purposes of Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent is not commonly known by the disputed domain name. In fact, Respondent’s WHOIS information
indicates that Respondent operates under the name “BargainName.com.” Moreover, Respondent has not provided any
evidence to counter Complainant’s allegations.
Respondent’s failure to submit a response and provide evidence to
demonstrate that it is commonly known by the disputed domain name leads this
Panel to accept as true Complainant’s argument. See Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence); see also G.D.
Searle & Co. v. Cimock, FA 126829
(Nat. Arb. Forum Nov. 13, 2003):
Due to the fame of Complainant’s mark
there must be strong evidence that Respondent is commonly known by the disputed
domain name in order to find that Respondent has rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and
Respondent has not come forward with any proof to establish that it is commonly
known as CELEBREXRX or <celebrexrx.com>.
Id.; see also Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov.
17, 2003) (“Given the WHOIS contact information for the disputed domain [name],
one can infer that Respondent, Onlyne Corporate Services11, is not commonly
known by the name ‘welsfargo’ in any derivation.”). Thus, the
Panel finds that Respondent failed to meet its burden and has not established
rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
Additionally,
Complainant asserts that Respondent has not made a legitimate use of the domain
name and instead has been passively holding onto it. Without a response from Respondent, the Panel accepts as true
Complainant’s assertion that Respondent is passively holding onto the disputed
domain name. See Vanguard Group,
Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that
because Respondent failed to submit a Response, “Complainant’s submission has
gone unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”). The Panel holds that Respondent’s passive
holding of the <nikezone.com> domain name is not a bona fide
offering of goods or services or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(i) or (iii). See Am. Home Prods. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where the respondent merely
passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001)
(finding that no rights or legitimate interests can be found when the
respondent fails to use disputed domain names in any way).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent acted in bad faith in registering the disputed domain
name and holding it. Although Policy ¶
4(b) includes a list of four specific situations that constitute evidence of
bad faith registration and use, the Panel is not limited to this list and may
take into account additional evidence in making a finding under Policy ¶
4(a)(iii). See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that
in determining if a domain name has been registered in bad faith, the Panel
must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent has
not provided this Panel with any evidence that would suggest that Respondent is
holding on to the disputed domain name for any non-infringing purpose. Without any indication that Respondent
registered the domain name for a legitimate purpose and is holding on to it for
a legitimate reason, the Panel finds that Respondent’s passive holding of the
<nikezone.com> domain name constitutes bad faith registration and
use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Alitalia –Linee
Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000)
(finding bad faith where the respondent made no use of the domain name in
question and there are no other indications that the respondent could have
registered and used the domain name in question for any non-infringing
purpose).
Respondent
registered the <nikezone.com> domain name with actual or
constructive knowledge of Complainant’s rights in the NIKE mark due to
Complainant’s registration of the mark with the USPTO due to the mark’s
fame. The NIKE mark is a world-famous
mark, with registration in numerous foreign countries. Complainant has spent millions of dollars in
advertising and promoting its mark around the world. The Panel concludes that regardless of Respondent’s residence,
the prominence of the NIKE mark and its numerous trademark registrations gave
actual or constructive knowledge of Complainant’s rights in the mark to
Respondent at the time of registration.
See Via Rail Canada Inc. v. Mean Old Man Prods., AF-0759
(eResolution Apr. 23, 2001) (“A
strong trademark, where unique because of its coined origins . . . might
effectively preclude any legitimate or good faith registration or use of an
identical or similar domain name.”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the
respondent’s registration and use of an identical and/or confusingly similar
domain name was in bad faith where the complainant’s BEANIE BABIES mark was
famous and the respondent should have been aware of it); 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.”).
The
Panel, therefore, finds that Complainant satisfied 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 <nikezone.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 2, 2005.
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