NIKE, Inc., and Nike Innovate, C.V. v. WojciechSuwada / Wojciech Suwada
Claim Number: FA1705001732789
Complainant is NIKE, Inc., and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is WojciechSuwada / Wojciech Suwada (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikesklep.com>, registered with NetArt Sp z o.o.
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.
Debrett Gordon Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2017; the Forum received payment on May 22, 2017.
On May 25, 2017, NetArt Sp z o.o confirmed by e-mail to the Forum that the <nikesklep.com> domain name is registered with NetArt Sp z o.o and that Respondent is the current registrant of the name. NetArt Sp z o.o has verified that Respondent is bound by the NetArt Sp z o.o 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 June 1, 2017, the Forum served the Polish language Complaint and all Annexes, including a Polish language Written Notice of the Complaint, setting a deadline of June 21, 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@nikesklep.com. Also on June 1, 2017, the Polish language 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 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett Gordon Lyons 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 a formal response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Polish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in NIKE and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent wrote twice to the Forum, once expressing surprise that it had misused the trademark and a second time stating: “I request that the panel transfer the domain name to NIKE. This is my official reply.”
The factual findings pertinent to the decision in this case are that:
1. Complainant owns the registered trademark NIKE[i];
2. the disputed domain name was created after Complainant established trademark rights; and
3. the domain name resolved to a website selling NIKE branded football clothing;
4. the Polish word “sklep” means, in English, “shop”; and
5. there is no relationship between the parties nor any permission given to use the trademark or register a domain name incorporating the trademark.
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."
Preliminary Procedural Issue : Consent to Transfer
After receipt of the Complaint, Respondent wrote to the Forum stating that it misunderstood Complainant’s rights and requested transfer of the disputed domain name to Complainant.
The Panel has a discretion to either apply the Policy or order a direct transfer of the disputed domain name. In some instances it makes good sense for Complainant to indicate its agreement to transfer in lieu of application of the Policy[ii] but the Panel has determined that this is unnecessary on this occasion.
Instead, this is a case where the Panel considers it appropriate to order a direct transfer. There is no evidence that Respondent is a cybersquatter or has been involved in other disputes under the Policy. Complainant does not assert that the football clothing sold at the resolving website is counterfeit and there is nothing which suggests that to be so. Complainant asserts that Respondent’s website is designed to pass itself off as an online location established by Complainant but having regard to the evidence the Panel regards that claim as overstated. The disputed domain name was registered on March 31, 2012. There is no evidence as to when it was first used however Complainant does not seem to have moved against Respondent with any real speed. Respondent’s correspondence seems to be genuinely contrite and no conditions have been attached to the request for transfer.
For the reasons given, it is Ordered that the <nikesklep.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: June 26, 2017
[i] For example, United States Patent and Trademark Office (“USPTO”) (Reg. No. 978,952, registered Feb. 19, 1974.
[ii] Consent-to-transfer can be one way for cybersquatters to avoid adverse findings against them. See, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (FORUM July 17, 2008).
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