NIKE, Inc., and Nike Innovate, C.V. v. Alireza Zare
Claim Number: FA1705001731606
Complainant is NIKE, Inc., and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, U.S.A. Respondent is Alireza Zare (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nike.eu.com>, registered with united-domains AG.
The undersigned certifies that he has acted independently and impartially and to the best of his her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on May 8, 2017.
Complainant submitted a Complaint to the Forum electronically on May 14, 2017; the Forum received payment on May 14, 2017.
On May 15, 2017, united-domains AG confirmed by e-mail to the Forum that the <nike.eu.com> domain name is registered with united-domains AG and that Respondent is the current registrant of the name. United-domains AG has verified that Respondent is bound by the united-domains AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On May 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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 email@example.com. Also on May 15, 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 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 CDRP 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 CDRPPolicy, CDRP 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.
Complainant contends as follows:
Complainant uses the NIKE mark in connection with the manufacturing and sale of athletic shoes and apparel.
Complainant owns multiple registrations for the NIKE mark with European Union (“EUTM”) as well as other registries worldwide.
Respondent’s <nike.eu.com> is identical and/or confusingly similar to Complainant’s mark because it incorporates the NIKE mark in its entirety, adding only the country-code top-level domain (“ccTLD”) “.eu” and the generic top-level domain (“gTLD”) “.com,” neither of which meaningfully distinguish the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <nike.eu.com>. 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 is designed to misdirect and confuse Complainant’s customers. This allows Respondent to phish for internet users’ sensitive information.
Respondent registered and used <nike.eu.com> in bad faith. Respondent’s use of the domain name involves attracting internet users to its site using Complainant’s notoriety, so that it may obtain sensitive information from Complainant’s customers by way of a phishing scam, presumably with the intent to financially profit from the information obtained. Thus, Respondent engages in bad faith behavior within the scope of Policy ¶ 4(b)(iv). Finally, Respondent’s actions suggest bad faith because Complainant’s mark is widely famous and Respondent has no connection to the trademark thus indicating that Respondent intended to opportunistically take advantage for Complainant’s trademark.
Respondent failed to submit a Response in this proceeding.
Complainant owns a EUTM trademark registration for its NIKE mark as well as numerous other registrations worldwide.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the NIKE mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <nike.eu.com> domain name to address a website that encourages users to give up proprietary information.
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.
The CDRP also requires that Complainant have paricipated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s EUTM registration of the NIKE mark as well as numerous other registrations for such trademark worldwide establishes Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Chevron Texaco Corp. v. Domains a/k/a Best Domains, FA0137035 (Forum Jan. 20, 2003) (finding rights established in the CHEVRON mark through registration with the U.S. Patent and Trademark Office, other governmental organizations worldwide, and widespread, continuous use of the mark in commerce).
Respondent’s <nike.eu.com> domain name contains Complainant’s NIKE mark in its entirety followed by the ccTLD “.eu” and the gTLD “.com”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to differentiate one from the other for the purpose of the Policy. Top level domain names have been widely held to be insignificant to a determination of confusing similarity or identity under the Policy. Therefore, the Panel finds that Respondent’s domain name is identical to Complainant’s NIKE mark pursuant to Policy ¶ 4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s< frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Alireza Zare.” The record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the <nike.eu.com> domain name to perpetrate a phishing scheme whereby <nike.eu.com> website visitors, who may also be Complainant’s customers, are deceived into revealing proprietary personal data such as email addresses and account passwords. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website); see also, Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above regarding rights and interests, Respondent’s trademark identical domain name was registered and used so that Respondent might pass itself off as Complainant as part of a phishing scheme. The scheme targets internet users and tricks them into giving up proprietary information to Respondent. Such use of the domain name indicates Respondent’s bad faith in registering and using the <nike.eu.com> domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); see also Juno Online Servs., Inc. v. Carl Nelson, FA 241972 (Forum Mar. 29, 2004) (finding fraudulent use of a domain name “in order to facilitate the interception of [c]omplainant’s customer’s account information” satisfies the requirements of ¶ 4(b)(iv) of the Policy).
Finally, Complainant’s NIKE trademark is well-known and registered in many countries throughout the world. In light of the mark’s notoriety and Respondent’s overt use of the domain name to impersonate Complainant there can be no doubt that Respondent was well aware of Complainant’s NIKE mark when it registered the identical <nike.eu.com> domain name. Clearly Respondent registered the domain name precisely to capitalize on Complainant’s trademark. Registering a domain name with knowledge of another’s rights therein is indicative of bad faith under Policy ¶4(a)(iii). See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (“The domain name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests opportunistic bad faith.”); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nike.eu.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 13, 2017
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