Nike, Inc. v. Above.com Domain Privacy
Claim Number: FA1504001614331
Complainant is Nike, Inc. (“Complainant”), represented by Laura C. Gustafson of Pillsbury Winthrop Shaw Pittman, LLP, California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikenews.com>, registered with ABOVE.COM PTY LTD.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2015; the Forum received payment on April 14, 2015.
On April 15, 2015, ABOVE.COM PTY LTD. confirmed by e-mail to the Forum that the <nikenews.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nikenews.com. Also on April 17, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Nike is a globally well-known company and the world's leading manufacturer of sports shoes and sports apparel, with retail stores throughout the United States and countries around the world. Nike owns and has beer1using its NIKE Marks for over forty years. Nike operates a website at <Nike.com>, with a Nike news website available at <News.Nike.com>.
2. Respondent's domain name <Nikenews.com> is, and is intended to be, confusingly similar to the Nike Marks.
3. Respondent has no legitimate rights or interests in the <Nikenews.com> domain name.
4. Respondent registered and is using the <Nikenews.com> domain name in bad faith, with obvious intent to cause confusion or mistake and to deceive consumers and divert traffic away from Nike's legitimate websites at <Nike.com> and <News.Nike.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Respondent’s <nikenews.com> domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nikenews.com> domain name.
3. Respondent registered or used the <nikenews.com> domain name 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."
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.
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.”).
Nike carries on an established business in respect of a large variety of goods, including footwear, clothing, headgear, bags, eyewear, watches and other electronic products, and sports equipment. Nike is the world's leading manufacturers of sports shoes and sports apparel.
Nike adopted the NIKE mark in 1971 and has been using the NIKE mark continuously since that time. NIKE owns numerous registrations and applications to register the NIKE mark around the world, which are identified in the Complaint. The NIKE Marks are also registered in over 150 countries and regions, including in Australia where the Respondent is based.
NIKE products are sold through NIKE retail stores in numerous cities throughout the U.S. and around the world, through the NIKE.com website and through third party retail stores and online retail sites throughout the U.S. and around the world.
Through extensive use and promotion, Nike has developed significant goodwill in the NIKE Marks. The NIKE mark is among the most widely recognized marks throughout the world and is a strong indicator of origin in Nike products. Consumers of all kinds in the U.S. and throughout the world recognize the NIKE mark as a source identifier for NIKE products.
The only difference between Respondent's domain name, <Nikenews.com>, and the NIKE mark is the addition of the generic term “news" after the distinctive term NIKE; ftuiher Respondent's <Nikenews.com> is nearly identical to the official Nike news site at
<News.Nike.com>, with the only difference being the transposition of elements.
The fact that the disputed domain name contains the term "news" is irrelevant as the addition of the generic term "news" to the famous NIKE mark by Respondent does nothing to distinguish its obviously deceptive domain name <Nikenews.com>. It is well recognized in UDRP decisions that "use of a Complainant's trademark as the distinctive portion of a domain name in dispute is a confusingly similar use of the Complainant's trademark" and addition of a generic term, such as "news," does not prevent the confusing similarity. Sanofi-Aventis v. Healthcare Online, WIPO Case D2004-0806 (specifically finding that "use of a generic term "news" in conjunction with the Complainant's trademark ACOMPLIA does not prevent the domain names in dispute from being found confusingly similar, as the generic term is lacking in distinctiveness"); Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case D2000-1076. This is particularly true where the Complainant's mark is famous. In Nike, Inc. v. Paul Verschoor, WIPO Case D2000-1707, the Panel specifically found that "addition of a descriptive term to a famous trade mark does little to alter the inherent trade mark nature of the term Nike," finding Nikesoccer.com, Nikesoccer.org and Nike soccer.net confusingly similar to NIKE.
Here, Respondent's use of the famous NIKE mark in combination with the generic term "news" increases the likelihood of confusion as the domain name, on its face, suggests it is the official news site for Nike and is related to Nike, when in fact it is not. Respondent's confusingly similar <Nikenews.com> diverts users trying to find the official Nike news site, directing them away from the official site at <News.Nike.com> to the unauthorized site at <Nikenews.com>.
Accordingly, the Panel finds Respondent's <Nikenews.com> is nearly identical and confusingly similar to the Nike Marks under ICANN Policy 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The record reflects Respondent is not using the <Nikenews.com> domain name in connection with any bona fide offering of goods or services. Respondent is not commonly known by the name NIKENEWS, or Nikenews.com, and, to Complainant's knowledge, does not own any trademark registrations for NIKENEWS. Nike has not authorized Respondent in any way to use the NIKE Marks or the <Nikenews.com> domain name. Respondent does not operate any business under the <Nikenews.com> domain name or NIKENEWS name. The <Nikenews.com> website makes no reference to any legitimate business by Respondent under the <Nikenews.com> or NIKE NEWS name. Respondent's domain name resolves to a website displaying what appeared to be generic links, several of which referenced Nike products.
The <Nikenews.com> domain name diverts users from Nike's legitimate websites at
<Nike.com> and <News.Nike.com> and further attempts to direct visitors to other nonNike
websites for products. There is no legitimate business or other use by Respondent of the
<Nikenews.com> domain name. Am. Online, Inc. v. Tencent Comm. Corp.. FA 93668 (Nat. Arb. Forum Mar. 21, 2000).
Respondent's use of the famous NIKE mark in its domain name to direct users to its unauthorized website is not a legitimate use. Chanel, Inc. v. Estco Technology Group, WIPO Case D-2000-0413. Upon keying Respondent's domain name into the browser, unsuspecting Internet users, looking for an official Nike website and/or official Nike news source, are instead confronted with a website that is not affiliated with or authorized by Nike and has no connection with Nike.
Respondent is not making a legitimate noncommercial or fair use of the
<Nikenews.com> domain name. Respondent clearly intends to misleadingly divert consumers.
Respondent has intentionally attempted to attract, for comn1.ercial gain, Internet users to its website, by creating a likelihood of confusion with the NIKE Marks and the <Nike.com> and <News.Nike.com> domain names, as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its web site or location. Under Policy I 4(b)(iv), Respondent has registered and is using its domain name in bad faith.
Further, Respondent has registered and is using the <Nikenews.com> domain name primarily for the purpose of disrupting Nike's legitimate commercial interests by diverting consumers away from Nike's legitimate website and online retail store at <Nike.com> and its official company news website at <News.Nike.com>, and to Respondent's unauthorized website at <Nikenews.com>, thus evidencing Respondent's bad faith under ICANN Policy ,4(b)(iii). Respondent specifically selected and registered the <Nikenews.com> domain name to draw traffic and business away from Nike and to Respondent's website.
Respondent's use of the famous NIKE mark evidences its bad faith in the registration and use of the <Nikenews.com> domain name. Respondent has intentionally attempted to benefit from the goodwill and fame of the NIKE Marks in order to attract, for commercial gain, Internet users to its web site, and divert users from Nike's legitimate websites. In selecting a domain name that incorporates the famous NIKE mark, Respondent is attempting to benefit from a perceived affiliation with Nike and the NIKE Marks. Respondent uses its <Nikenews.com> domain name to ensnare unsuspecting Internet users and divert them from Nike's legitimate website and online retail location at <Nike.corn> and Nike's official news site at <News.Nike.com> to Respondent's unauthorized website.
The fact that Respondent's domain name consists of Nike's well known mark, with no ascertainable reason or purpose, evidences Respondent's bad faith, reflecting Respondent's intent to misdirect traffic intended for Nike to its website for commercial gain. It is well established in UDRP decisions, that use of a famous trademark in a domair1name, without any legitimate rights to such mark, is evidence of bad faith. See Nike, Inc. v. Crystal International, WIPO Case D2001MO102 ("the Panel considers that bad faith is indicated by the registration of a series of domain names which are confusingly similar to a famous brand name followed by the absence of any legitimate use...").
The Panel finds that the Respondent registered and used the subject domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikenews.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 29, 2015
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