Nike, Inc. v. Online Marketing Realty c/o Young Jin
Claim Number: FA0605000713839
Complainant is Nike, Inc. (“Complainant”), represented by Margo Fowler, of Nike, Inc., One Bowerman Drive, DF/4, Beaverton, OR 97005. Respondent is Online Marketing Realty c/o Young Jin (“Respondent”), 611 Wilshire #700, Los Angeles, CA 90017.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nikestore.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 24, 2006.
On May 25, 2006, Register.com confirmed by e-mail to the National Arbitration Forum that the <nikestore.com> domain name 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 May 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 2006 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@nikestore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a leading international sports and fitness company that manufactures and markets a broad range of athletic footwear, apparel and equipment.
Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the widely recognized NIKE mark (Reg. No. 978,952, issued Feb. 19, 1974).
Respondent registered the <nikestore.com> domain name on April 15, 2006.
Respondent is not licensed or otherwise permitted by Complainant to make commercial use of Complainant’s mark.
Respondent has no connection with Complainant or the sale of its products.
On May 1, 2006, Complainant contacted Respondent by regular mail and e-mail, demanding that Respondent refrain from use of the disputed domain name.
Respondent has failed to respond to those communications.
Respondent’s <nikestore.com> domain name is confusingly similar to Complainant’s NIKE mark.
Respondent is not commonly known by the contested domain name, and does not have any rights or legitimate interests in the <nikestore.com> domain name.
Respondent registered and uses the <nikestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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 was 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
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 in bad faith.
Complainant has established rights in the NIKE mark through
its registration with the USPTO. 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 U.S. Office of Pers. Mgmt. v. MS
Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003): “[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”
Complainant asserts that the <nikestore.com> domain name is confusingly similar to its NIKE mark. The disputed domain name features Complainant’s NIKE mark in its entirety and merely adds the generic term “store” and the generic top-level domain (“gTLD”) “.com.” Respondent’s addition of a generic word and a gTLD to Complainant’s mark fails to differentiate the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). See 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); see also 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 a complainant combined with a generic word or term).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the <nikestore.com> domain name. Under Policy ¶ 4(a)(ii), Complainant bears
the initial burden of proof to establish that Respondent lacks rights and
legitimate interest in the disputed domain name. See Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where a complainant asserts that a respondent has no rights or legitimate
interests with respect to a domain name, it is incumbent on that respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”).
Through uncontested assertions in its Complaint, Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden therefore shifts to Respondent to present evidence establishing that Respondent has rights and legitimate interests in the disputed domain name.
And, despite having
the opportunity to do so, Respondent has failed to respond to the Complaint. Nor has Respondent responded to
Complainant’s cease-and-desist letter of May 1, 2006.
On these facts, the Panel concludes that Respondent has no rights to or legitimate interests in the contested domain name within the meaning of the Policy.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We first observe under this heading that Respondent
registered the contested domain name with actual or constructive knowledge of
Complainant’s rights in the NIKE mark by virtue of Complainant’s prior
registration of that mark with the pertinent national authorities. Registration of a confusingly similar domain
name despite such actual or constructive knowledge evidences bad faith
registration of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
It is a separate question, however, whether Respondent is also using the disputed domain name in bad faith. In this connection, Complainant does not allege active employment of the domain name, and indeed it does not resolve to any website or other on-line presence, nor is there any evidence to suggest that a website or other on-line presence is in the process of being established for it. These facts, standing alone, might seem to indicate the absence of bad faith use of the contested domain name within the contemplation of Policy ¶ 4(a)(iii). However, “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
The circumstances of this case illustrate such a situation. Here Complainant’s mark is undeniably famous and has long been publicly registered with the pertinent national authorities. Moreover, there is no contention that Respondent has ever been known by the name or otherwise possesses rights to or legitimate interests in it. In addition, there is no evidence of any intent on the part of Respondent for a good faith use of the name. And, indeed, the Panel cannot conceive of a plausible use of it that would not be illegitimate. Finally, Respondent has failed to respond either to the Complaint in this proceeding or to Complainant’s cease-and-desist communications.
In light of these circumstances, the Panel has no difficulty in concluding that Respondent registered and is using the contested domain name in bad faith, so that the requirements of Policy ¶ 4(a)(iii) have been satisfied by Complainant’s submissions.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <nikestore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 30, 2006
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