national arbitration forum

 

DECISION

 

Nike, Inc. v. Domain Administrator a/k/a M C

Claim Number: FA0811001233377

 

PARTIES

Complainant is Nike, Inc. (“Complainant”), represented by David J. Steele, of Christie, Parker & Hale, LLP, California, USA.  Respondent is Domain Administrator a/k/a M C (“Respondent”), North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nikeairforceone.com> and <nikeairforceone.biz>, registered with Moniker Online Services, Inc. and Godaddy.com, Inc, respectively.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of knowledge has no known conflict in serving as Panelist in this proceeding.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2008.

 

On November 11, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <nikeairforceone.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 November 11, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nikeairforceone.biz> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

 

On November 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 8, 2008 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@nikeairforceone.com and postmaster@nikeairforceone.biz by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nikeairforceone.com> and <nikeairforceone.biz> domain names are confusingly similar to Complainant’s NIKE and AIR FORCE I marks.

 

2.      Respondent does not have any rights or legitimate interests in the <nikeairforceone.com> and <nikeairforceone.biz> domain names.

 

3.      Respondent registered and used the <nikeairforceone.com> and <nikeairforceone.biz> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Nike, Inc., has used the NIKE mark since 1971 in connection with its athletic shoe business.  In 1982, Complainant first released its AIR FORCE I (pronounced “air force one”) line of basketball sneakers.  Complainant registered the NIKE mark (Reg. No. 978,952) with the United States Patent and Trademark Office (“USPTO”) on February 19, 1974 and its AIR FORCE I mark (Reg. No. 3,520,484) with the USPTO on October 21, 2008 (filed April 8, 2008).  The registration of the AIR FORCE I mark cites the mark’s first use in interstate commerce as October 28, 1982.  Since they were introduced in 1982, AIR FORCE I brand NIKE shoes have become well-known.  Including in 2002, St. Louis hip-hop artist Nelly released a song entitled “Air Force Ones” as a tribute to the popular shoes.

 

Respondent registered the <nikeairforceone.com> domain name on December 25, 2001 and the <nikeairforceone.biz> domain name on October 12, 2007.  The disputed domain names are being used to resolve to websites that list links for third-party websites in direct competition to Complainant’s business.  Respondent has listed the <nikeairforceone.com> domain name for sale starting at $49,000 and the <nikeairforceone.biz> domain name for sale starting at $40,000 on a domain name auction site.

 

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant must first establish that it has rights to the marks included in the disputed domain names.  Complainant’s registration of the NIKE mark with the USPTO establishes its rights to the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., 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.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

Under Policy ¶ 4(a)(i) registration of a trademark is not necessary to establish that Complainant has rights in the mark.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

Complainant has used the AIR FORCE I mark continuously since 1982.  Complainant’s AIR FORCE I basketball shoes have become famous, as evidenced by websites dedicated to shoe collections and the 2002 Nelly song “Air Force Ones.”  Further, Complainant registered the mark with the USPTO in 2008, which provides evidence that the mark is distinctive and has taken on a secondary meaning.  The Panel finds that Complainant has established rights in the AIR FORCE I mark pursuant to Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).

 

The disputed domain names incorporate Complainant’s NIKE mark in its entirety, spells out the Roman numeral “I” in Complainant’s AIR FORCE I mark, and adds the generic top-level domains (“gTLD”) “.com” or “.biz.”  The addition of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Complainant’s AIR FORCE I mark uses the Roman numeral “I,” which Respondent spells out in the disputed domain names.  The Panel therefore finds that the <nikeairforceone.com> and <nikeairforceone.biz> domain names are confusingly similar to Complainant’s NIKE and AIR FORCE I marks pursuant to Policy ¶ 4(a)(i).  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the complainant’s YAHOO mark); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain name.  Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).  The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).

 

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the disputed domain names.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use either the NIKE or AIR FORCE I marks, and the WHOIS information identifies Respondent as “Domain Administrator a/k/a M C.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Respondent is using the disputed domain names to link to third-party websites that provide discounts on Complainant’s shoes.  Respondent’s use of a domain name that is confusingly similar to Complainant’s NIKE and AIR FORCE I marks to redirect Internet users interested in Complainant’s business to competing websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Further, Respondent’s general offer to sell the <nikeairforceone.com> and <nikeairforceone.biz> domain names is evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The disputed domain names were posted on the website resolving from the <auctions.godaddy.com> domain name.  The starting bid for the <nikeairforceone.com> domain name is $49,000.  The starting bid for the <nikeairforceone.biz> domain name is $40,000.  The Panel finds that posting the domain names for sale on the auction site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i), as it is evidence of Respondent’s primary intention to sell the disputed domain names.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

 

Respondent’s use of Complainant’s NIKE and AIR FORCE I marks in the disputed domain names to redirect Internet users to competing websites suggests that Respondent registered the disputed domain names intending to disrupt Complainant’s business.  The Panel finds that this is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

The Panel infers that Respondent receives click-through fees for diverting Internet users to third-party websites.  Because Respondent’s domain names are confusingly similar to Complainant’s NIKE and AIR FORCE I marks, Internet users accessing Respondent’s disputed domain names may become confused as to Complainant’s affiliation with the resulting websites.  Thus, Respondent’s registration and use of the <nikeairforceone.com> and <nikeairforceone.biz> domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <nikeairforceone.com> and <nikeairforceone.biz> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Louis E. Condon, Panelist

Dated:  December 25, 2008

 

 

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