DECISION

 

NIKE, Inc., and Nike Innovate, C.V. v. Yang Pyung / HISWILL

Claim Number: FA1705001730518

 

PARTIES

Complainant is NIKE, Inc., and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA.  Respondent is Yang Pyung / HISWILL (“Respondent”), South Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nikeretail.net>, registered with Samjung Data Service Co., Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 5, 2017; the Forum received payment on May 5, 2017.

 

On May 23, 2017, Samjung Data Service Co., Ltd confirmed by e-mail to the Forum that the <nikeretail.net> domain name is registered with Samjung Data Service Co., Ltd and that Respondent is the current registrant of the name.  Samjung Data Service Co., Ltd has verified that Respondent is bound by the Samjung Data Service Co., 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 May 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2017 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@nikeretail.net.  Also on May 22, 2017, 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 June 14, 2017, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant uses the NIKE mark in connection with the creation and sale of various athletic products, including apparel and footwear. Complainant registered the NIKE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 978,952, registered Feb. 19, 1974), which demonstrates its rights in the mark. See Compl., at Attached Ex. D. Respondent’s <nikeretail.net> is confusingly similar to Complainant’s mark because it incorporates the NIKE mark in its entirety, adding only the generic term “retail” and the generic top-level domain name (“gTLD”)

“.net,” neither of which meaningfully distinguishes the domain name from Complainant’s registered mark.

2.    Respondent has no rights or legitimate interest in <nikeretail.net>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the NIKE mark for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services, because the domain name resolves to a site that intentionally mimics Complainant’s own website. See Compl., at Attached Ex. E. Further, Respondent uses the site to obtain sensitive customer account information by way of a phishing scam, which is designed to capitalize on the fame and goodwill of Complainant’s mark.

3.    Respondent registered and continues to use <nikeretail.net> in bad faith. Respondent’s use of the disputed domain name involves attracting Internet users to its site by unfairly capitalizing on Complainant’s notoriety, so that it may ‘pass off’ as Complainant in order to obtain sensitive information from Complainant’s customers. Presumably, Respondent uses this information to financially profit at the expense of Complainant’s customers. Finally, Respondent must have had actual notice of Complainant’s rights in the NIKE mark because of the mark’s widespread notoriety.

 

B.   Respondent

1.    Respondent did not submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <nikeretail.net> domain name is confusingly similar to Complainant’s NIKE mark.

2.    Respondent does not have any rights or legitimate interests in the <nikeretail.net> domain name.

3.    Respondent registered or used the <nikeretail.net> domain name in bad faith.

 

DISCUSSION

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(f), 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 (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.”).

 

Identical and/or Confusingly Similar

The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a  trademark. Complainant claims to have registered the NIKE mark—used in the creation and sale of athletic apparel and footwear—with the USPTO as early as 1974 (e.g. Reg. No. 978,952, registered Feb. 19, 1974), which it contends demonstrates its longstanding rights in the mark. See Compl., at Attached Ex. D. Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in or to the NIKE mark under Policy ¶ 4(a)(i).

 

The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain name is confusingly similar to its NIKE mark because it is composed entirely of the mark, with only two minor additions: the generic term “retail,” and a “.net” gTLD. Neither of these, Complainant argues, sufficiently distinguishes the disputed domain name from its NIKE mark. The addition of generic words—particularly words like “retail,” which pertain to a complainant’s trademark-related activities—fails to sufficiently distinguish domain names from registered marks. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Further, the addition of the “.net” gTLD is insufficient to preclude a finding of confusing similarity. See Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum Dec. 22, 2010) (finding, “The addition of the gTLD ‘.net’ also has no effect on the Policy ¶ 4(a)(i) analysis.”). Therefore, this Panel finds that the additions made to Complainant’s NIKE mark in <nikeretail.net> do not serve to differentiate the two for the purposes of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 (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 (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.”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <nikeretail.net> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the NIKE mark, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel sees that the WHOIS information concerning <nikeretail.net> identifies “Yang Pyung” of “HISWILL” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. See Compl., at Attached Ex. A. As such, the Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <nikeretail.net> domain name pursuant to Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent has designed the disputed domain name’s resolving site that mimics the site of Complainant itself in an attempt to ‘pass off’ as Complainant. See Compl., at Attached Ex. E. Attempting to create an affiliation with a trademark where none exists constitutes neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Complainant provides a screenshot of the webpage of the resolving webpage, which confirms the mimicking of Complainant’s marks. See Compl., at Attached Ex. E. Therefore, this Panel agrees that Complainant has sufficiently made its prima facie showing against Respondent under Policy ¶¶ 4(c)(i) and (iii).

 

Finally, Complainant contends that Respondent uses <nikeretail.net> to obtain sensitive user information through phishing tactics. In this scheme, the domain name’s resolving site prompts Internet users to enter their email addresses and passwords, presumably allowing Respondent to access further, more sensitive information later. See Compl., at Attached Ex. E. Panels have indicated that complainants can use evidence of phishing as additional evidence of a respondent’s lack of interest in a disputed domain name. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). As such, this Panel concludes that Respondent’s use of <nikeretail.net> is illegitimate and unfair for purposes of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant makes one prominent assertion that falls within the articulated provisions of Policy ¶ 4(b): that Respondent registered and uses the disputed domain name for commercial gain of the kind articulated in Policy 4(b)(iv). Complainant alleges that Respondent uses <nikeretail.net> to obtain Complainant’s customer’s account information by employing a confusingly similar domain name and a resolving site that mimics Complainant’s own web design. Using a mark’s goodwill and notoriety in attempt to ‘pass off’ as a complainant can be evidence of bad faith on the part of a respondent. See Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information... The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel concludes that Complainant has sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶ 4(b)(iv).

 

In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)

(“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In this proceeding, Complainant argues that Respondent engages in a phishing scheme designed to allow Respondent to obtain Complainant’s customers’ account information—presumably for financial gain. Using a confusingly similar domain name to phish for sensitive information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users’ personal information). Respondent presumably intends to—or actually does—profit from this phishing scheme. Thus, the Panel concludes that Complainant sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).

 

Further, Complainant argues that this phishing scheme is only made possible by the widespread notoriety of Complainant’s registered NIKE mark, which Respondent has appropriated unfairly and opportunistically. Use of a widely known mark to confuse Internet users and divert Internet traffic to a non-authentic site can constitute additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). Therefore, the Panel determines that both the disputed domain name and the resolving site are confusingly similar to Complainant’s NIKE mark and corresponding website, and it agrees that Respondent has exhibited opportunistic bad faith.

 

Finally, Complainant argues that Respondent registered the disputed domain name despite actual notice of Complainant’s rights in the NIKE mark, which provides clear evidence of bad faith. Although Panels have held that constructive notice alone is insufficient for a finding of bad faith, this Panel may find that Complainant’s evidence of actual notice sufficiently constitutes bad faith registration and use of the <nikeretail.net> domain name pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Complainant argues that the NIKE mark’s widespread notoriety evidences actual notice to Respondent of Complainant’s rights in the marks, which is supported by Respondent’s phishing scheme, which must have been designed with knowledge of Complainant’s mark, website, and customer base. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the NIKE mark and registered the <nikeretail.com> domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nikeretail.net> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  June 27, 2017