Nike, Inc. v. Vic Log a/k/a Vic Logachev
Claim Number: FA0603000651975
PARTIES
Complainant is Nike, Inc. (“Complainant”), represented by Philip Davison, of Nike, Inc., One Bowerman Drive, DF/4, Beaverton, OR 97005. Respondent is Vic Log a/k/a Vic Logachev (“Respondent”), PO Box
30433, Long Beach, CA 90853.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <asknike.com>, <directnike.com>, <jnike.com>, <nikeshoxrunning.com> and <nikedealer.com>, registered with Schlund+Partner Ag.
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 28, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 2, 2006.
On March 2, 2006, Schlund+Partner Ag confirmed by e-mail to the
National Arbitration Forum that the <asknike.com>, <directnike.com>, <jnike.com>, <nikeshoxrunning.com> and <nikedealer.com> domain names are registered with Schlund+Partner
Ag and that the Respondent is the current registrant of the names. Schlund+Partner Ag has verified that
Respondent is bound by the Schlund+Partner Ag 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 March 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 27, 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@asknike.com, postmaster@directnike.com,
postmaster@jnike.com, postmaster@nikeshoxrunning.com, and
postmaster@nikedealer.com by e-mail.
An electronic copy of the Response was received on March 27, 2006. Respondent did not submit a hard copy of the
Response and therefore, The Forum does not consider the Response to be in compliance
with ICANN Rule #5 (a).
On April 3, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <asknike.com>, <directnike.com>, <jnike.com>, <nikeshoxrunning.com> and <nikedealer.com> domain names are confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <asknike.com>, <directnike.com>, <jnike.com>, <nikeshoxrunning.com> and <nikedealer.com> domain names.
3.
Respondent registered and used the <asknike.com>, <directnike.com>, <jnike.com>, <nikeshoxrunning.com> and <nikedealer.com>
domain names in bad
faith.
B. Respondent failed to submit a hard copy Response by the due date.
FINDINGS
Complainant holds many trademark
registrations for the famous mark NIKE for athletic footwear, apparel,
equipment and retail store services, and has used it worldwide dating back to
1971.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 established rights in the NIKE mark by registering it
with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 978,952
issued February 19, 1974). See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18,
2001) (finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., 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.”).
Complainant contends that the <asknike.com>, <directnike.com>, <jnike.com>, <nikeshoxrunning.com> and <nikedealer.com> domain names are confusingly similar to Complainant’s NIKE mark because the domain names incorporate Complainant’s mark in its entirety and add letters, common terms and the generic top-level domain “.com.” Such minor additions to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); 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 the complainant combined with a generic word or term): see also 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 Policy ¶ 4(a)(i) has
been satisfied.
Complainant states that Respondent has no rights or legitimate interests in the mark NIKE. Once Complainant makes a prima facie case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent is not commonly known by the disputed domain names because the WHOIS information suggests that Respondent is known as “Vic Log.” See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent has not made any use of
the disputed domain names since registering them in June
2005. Without evidence of demonstrable
preparations to use the disputed domain names, the Panel determines that
Respondent has not made 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). See Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, the respondent had not used the domain names in connection with any
type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that a respondent made preparations to
use the domain name in connection with a bona fide offering of goods or
services before notice of the domain name dispute, the domain name did not
resolve to a website, and the respondent is not commonly known by the domain
name); see also Ziegenfelder Co.
v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure
to provide a product or service or develop the site demonstrates that the
respondents have not established any rights or legitimate interests in the
domain name).
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Complainant also asserts that Respondent has registered the disputed domain names in bad faith because Respondent has made no use of the domain names since registering them in June 2005 and has not provided evidence of demonstrable preparations to use the domain names. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Alitalia – Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
Respondent’s bad faith registration is further evidenced by the fact that Respondent has registered five separate domain names containing the famous NIKE mark. Such registrations demonstrate a pattern of bad faith conduct. Under Paragraph 4(b)(ii) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), it is evidence of bad faith if a respondent has registered the domain name “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct”. See General Elec. Co. v. Anstalt, D2000-0452 (WIPO July 10, 2000) (finding that the registration of several names corresponding to Complainant’s trademarks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4 (b)(ii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
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 <asknike.com>, <directnike.com>, <jnike.com>, <nikeshoxrunning.com> and <nikedealer.com> domain names be TRANSFERRED from
Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 17, 2006
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