Nike, Inc. v. Karen Vog
Claim Number: FA0510000579895
Complainant is Nike, Inc. (“Complainant”), represented by Philip Davison, One Bowerman Drive, DF/4, Beaverton, OR 97005. Respondent is Karen Vog (“Respondent”), 17 Dottie Drive, Belle, Illinois 62223.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com>, registered with Go Daddy Software, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 19, 2005.
On October 19, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 October 19, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 8, 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@nike-air-force-one-shoes.com and postmaster@nike-basketball-shoes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names are confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names.
3. Respondent registered and used the <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nike, Inc., is one of the world’s leading
sports and fitness companies, which designs, manufactures and markets a wide
range of athletic and athleisure footwear, apparel and equipment. Since 1971, Complainant has used its NIKE
mark in connection with its sports and fitness products.
Complainant owns numerous registrations with the United
States Patent and Trademark Office (“USPTO”) for its NIKE mark (i.e. 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).
Complainant has invested substantial effort, money and other resources
to market Complainant’s NIKE mark. As a
result, Complainant’s mark has achieved distinctiveness and acquired valuable
goodwill.
Respondent registered the <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names on June 16, 2004. Before Complainant sent a cease and desist letter to Respondent informing Respondent of Complainant’s rights in the NIKE mark, the disputed domain names resolved to websites that offered the domain names for sale and displayed links to third-party websites. Following the letter, the domain names resolve to websites that display Complainant’s NIKE mark, provide information about Complainant and provide links to websites selling Complainant’s products.
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 has provided evidence of its registration of the
NIKE mark with the USPTO, which the Panel determines to be sufficient to
establish Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i). See 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.”); see also 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.”).
The <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names incorporate Complainant’s NIKE mark in its entirety and add hyphens and generic or descriptive terms that form phrases that describe Complainant’s products. These changes render the disputed domain names confusingly similar to Complainant’s famous mark. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”). Furthermore, the use of the generic top-level domain “.com” is not relevant to the analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the 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 finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names. Complainant further contends that Complainant has not licensed or authorized Respondent to use Complainant’s NIKE mark for any purpose. Nothing in the record contradicts Complainant’s assertions, including the WHOIS information, which identifies Respondent as “Karen Vog.” The Panel, therefore, concludes that Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant contends that prior to notifying Respondent of the dispute, Respondent was using the <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names to operate websites that offered the domain names for sale and displayed links to third-party websites. Complainant further argues that Respondent likely received referral fees for diverting Internet users to these third-party websites via the disputed domain names. Using Complainant’s NIKE mark in domain names to attract Internet users to Respondent’s commercial website is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has used the <nike-air-force-one-shoes.com>
and <nike-basketball-shoes.com> domain names to operate
commercial websites through which Respondent likely earned referral fees. Respondent’s use of Complainant’s famous
NIKE mark to attract Complainant’s customers to Respondent’s website for Respondent’s
financial gain is evidence that Respondent registered and used the disputed
domain names in bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608
(Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was
registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark); see also eBay, Inc v. Progressive Life Awareness
Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to
Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with
the complainant’s EBAY mark and profited from it by diverting users seeking the
complainant to the respondent’s website).
Complainant’s registration of its NIKE mark with the USPTO prior to Respondent’s registration of the disputed domain names bestowed upon Respondent, apparently a United States resident, constructive notice of Complainant’s rights in the mark. Furthermore, it is likely that Respondent has actual knowledge of Complainant’s rights in the mark due to the fame associated with Complainant’s NIKE mark and Complainant’s extensive promotion of its mark throughout the world. Additionally, the domain names either have resolved or currently resolve to websites that include information about Complainant and link to websites that sell Complainant’s products. Therefore, the Panel finds that Respondent’s registration of the <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names with actual or constructive knowledge of Complainant’s rights in the NIKE mark is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here 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 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 finds that Complainant has 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 <nike-air-force-one-shoes.com> and <nike-basketball-shoes.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 30, 2005
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