Nike, Inc. v. shopkorea
Claim
Number: FA0506000496892
Complainant is Nike, Inc. (“Complainant”), represented
by Philip Davison, One Bowerman Drive, DF/4, Beaverton,
OR 97005. Respondent is shopkorea (“Respondent”), 114,
Yeoksam-dong, Gangnam-gu, Seoul, 135080, KR.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nikeplus.com>, registered with Wooho
T&C Co., Ltd. d/b/a Rgnames.com.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 15, 2005.
On
June 29, 2005, Wooho T&C Co., Ltd. d/b/a Rgnames.com confirmed by e-mail to
the National Arbitration Forum that the domain name <nikeplus.com>
is registered with Wooho T&C Co., Ltd. d/b/a Rgnames.com and that
Respondent is the current registrant of the name. Wooho T&C Co., Ltd. d/b/a Rgnames.com has verified that
Respondent is bound by the Wooho T&C Co., Ltd. d/b/a Rgnames.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
June 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 14, 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@nikeplus.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 Louis E. Condon
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 <nikeplus.com>
domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or
legitimate interests in the <nikeplus.com> domain name.
3. Respondent registered and used the <nikeplus.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Nike, Inc., designs, manufactures and markets
a broad range of athletic and athleisure footwear, apparel and equipment. Complainant is the world’s leading sports
and fitness company.
Complainant holds numerous registrations with the United States Patent
and Trademark Office (“USPTO”) for the NIKE mark (including Reg. No. 978,952
issued February 19, 1974; Reg. No. 1,153,938 issued May 12, 1981; and Reg. No.
1,243,248 issued June 21, 1983).
Furthermore, Complainant has registered the mark in many foreign
jurisdictions as well. Complainant
first used its NIKE mark in 1971 and has used the mark continuously since that
time.
Additionally, Complainant has spent millions of dollars to advertise and
promote its NIKE mark and has sold billions of dollars in merchandise under its
NIKE mark. Complainant’s NIKE mark has
become famous and has acquired extraordinarily valuable goodwill which is
associated with and owned by Complainant.
Respondent registered the <nikeplus.com> domain name on September 30, 2004. The domain name resolves to a website that
features a generic search engine and displays links to various products and
services. One of the links is to
Complainant, while most of the other links are to businesses unrelated to
Complainant. In addition, the Panel
presumes that Respondent earns commissions via click-through fees for diverting
users to third-party websites via the website at the disputed 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
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 (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 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
asserts rights in the NIKE mark due to its registration of the mark with the
USPTO and with other trademark authorities worldwide. It is well-established under the Policy that a complainant’s
registration of a mark with a federal authority is prima facie evidence
of the complainant’s rights. 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.”). Thus, Complainant’s
registration of its mark creates a presumption of rights in Complainant’s
favor, which shifts the burden of rebuttal to Respondent. 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. The respondent has the burden of refuting
this assumption.”). Without a response
from Respondent, there is no challenge to Complainant’s prima facie case
of rights in the mark. The Panel,
therefore, finds that Complainant has rights in the mark for the purposes of
Policy ¶ 4(a)(i).
The <nikeplus.com>
domain name includes Complainant’s NIKE mark in its entirety, adding only the
generic or descriptive word “plus” and the generic top-level domain (gTLD)
“.com.” Prior panels have consistently
held that adding a generic or descriptive term to a complainant’s mark will not
prevent a domain name from being deemed confusingly similar to the mark. See Nikon, Inc. v. Technilab, Inc.,
D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark in the domain name rather
than upon the likelihood of confusion test under U.S. trademark law); 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 Sony
Kabushiki Kaisha v. Inja, Kil, 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).
The Panel discerns no reason to distinguish this case from established
precedent and holds that the disputed domain name is confusingly similar to
Complainant’s NIKE mark under Policy ¶ 4(a)(i).
The Panel finds
that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
It has been
established under the Policy that the complainant has the initial burden of
proving that the respondent lacks rights and legitimate interests in the
disputed domain name. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel held:
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) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now conduct an analysis of whether Respondent has met its
burden to establish rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c).
Complainant
asserts that Respondent is not commonly known by the NIKE mark or the <nikeplus.com>
domain name and that Complainant has not licensed or otherwise permitted
Respondent to use Complainant’s mark or any variation thereof. Since the Panel has not received a response
from Respondent, the Panel is left with no evidence to rebut Complainant’s
contentions. Therefore, the Panel finds
that Respondent has not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
It has been
widely held under the Policy that a respondent’s use of a domain name that
contains a complainant’s mark to attract Internet users to a website that
displays links through which the respondent presumably earns click-through fees
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names).
Respondent is using the <nikeplus.com> domain name to
divert Internet users to a generic search engine website that displays a
variety of commercial links to various products and services. Some of the links are to Complainant or
Complainant’s competitors, while some are to sites unrelated to Complainant’s
business. In addition, Respondent has
not offered any arguments to contest Complainant’s contentions that Respondent
has not made a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name, which leads the Panel to the
conclusion that respondent has not established rights or legitimate interests
under Policy ¶ 4(c)(i) or (iii). See
Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
The Panel finds
that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The <nikeplus.com>
domain name resolves to a website that displays links to a variety of products
and services as well as a generic search engine. The Panel infers that Respondent receives a commission for
diverting Internet users to third-party websites via the search engine and
links at Respondent’s website.
Furthermore, by using Complainant’s famous NIKE mark in the domain name,
Respondent is creating a likelihood of confusion and attempting to attract
Internet users to Respondent’s website for Respondent’s commercial gain. The Panel finds that Respondent’s activities
are evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain); see
also Am. Online, Inc. v. Tencent
Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where the respondent registered and used a domain name confusingly similar to
the complainant’s mark to attract users to a website sponsored by the
respondent); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”).
Furthermore,
Complainant’s registration of the <nikeplus.com> domain name, which contains
Complainant’s famous NIKE mark in its entirety, suggests that Respondent knew
of Complainant’s rights in the mark.
Complainant has spent millions of dollars to advertise and promote its
mark throughout the world and has acquired substantial goodwill in its mark,
causing the public to associate the NIKE mark with Complainant’s goods and
services. In light of these circumstances,
the Panel finds that Respondent chose the disputed domain name due to the fame
of Complainant’s NIKE mark.
Respondent’s registration of a domain name that contains Complainant’s
mark despite Respondent’s knowledge of Complainant’s rights in the mark is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also 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 the
respondent had actual and constructive knowledge of the complainant’s EXXON
mark given the worldwide prominence of the mark and thus the respondent
registered the domain name in bad faith).
The Panel finds
that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <nikeplus.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
August 2, 2005
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