NIKE, Inc. and Nike Innovate C.V. v. Andrea Mariotti
Claim Number: FA1605001673357
Complainant is NIKE, Inc. and Nike Innovate C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, United States. Respondent is Andrea Mariotti (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nike.com.ro>, registered with ICI - ROTLD.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2016; the Forum received payment on May 4, 2016.
On May 5, 2016, ICI - ROTLD confirmed by e-mail to the Forum that the <nike.com.ro> domain name is registered with ICI - ROTLD and that Respondent is the current registrant of the name. ICI - ROTLD has verified that Respondent is bound by the ICI - ROTLD 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 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2016 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@nike.com.ro. Also on May 6, 2016, 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 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the NIKE mark in connection with its line of sports shoes, sports apparel, and sports equipment. Complainant has registered the NIKE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 978,952, registered February 19, 1974), which establishes rights in the mark. See Amended Compl., at Attached Ex. E. Respondent’s <nike.com.ro> domain name is identical to Complainant’s NIKE mark as it incorporates the mark in its entirety, and merely adds the generic top-level domain (“gTLD”) “.com” and the country code top-level domain (“ccTLD”) “.ro.”
Respondent has no rights or legitimate interests in the <nike.com.ro> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <nike.com.ro> domain name. Rather, the domain name resolves to an inactive website displaying an error message. See Amended Compl., at Attached Ex. H.
Respondent is using the <nike.com.ro> domain name in bad faith. First, Respondent registered the domain for the primary purpose of selling, renting, or otherwise transferring the domain to Complainant for an amount in excess of Respondent’s out-of-pocket costs to acquire the domain. Second, Respondent is not making an active use of the website. Finally, Respondent has engaged in opportunistic bad faith by registering a domain name so similar to the NIKE mark that it is inconceivable there would be any legitimate use that would not infringe on Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding. The record does not provide a specific registration date for <nike.com.ro>; rather, the WHOIS information indicates that the <nike.com.ro> domain name was registered before 2001.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered and subsisting trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that there is no doubt the disputed domain name is confusingly to the Complainant’s trademark. The Complainant adequately pled it rights in and to the registered and subsisting trademark NIKE. The Respondent arrives at the disputed domain name by using the Complainant’s trademark in total and simply adding the gTLD “.com” and the top level country code “.ro” to arrive at the disputed domain name. This changes do not distinguish the disputed domain name from the Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel finds that Respondent has no rights or legitimate interests in or to the <nike.com.ro> disputed domain name. Apparently, Respondent is not commonly known by the disputed domain name. See Complainant’s Exhibit A, the WHOIS information regarding the disputed domain name, listing “Andrea Mariotti” as registrant of record. The Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, Respondent is apparently making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <nike.com.ro> domain name. The disputed domain name is apparently not currently in use, and an error message is shown when Internet users attempt to access the website. See Amended Compl., at Attached Ex. H. Panels have held that such non-use or passive holding of a domain name consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (FORUM Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is 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)).
Therefore, the Panel finds that the disputed domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and, therefore, Respondent lacks rights or legitimate interests in or to the disputed domain name.
The Panel finds that the Respondent has engaged in bad faith use and registration of the disputed domain name. First, it appears that Respondent registered the domain primarily for the purpose of selling it to Complainant for an amount in excess of Respondent’s out-of-pocket costs to acquire the domain. The Complainant has, however, failed to provide any evidence to support this contention. Panels have routinely held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(i) where it makes an attempt to sell a disputed domain name for an amount in excess of its out-of-pocket costs to acquire the domain. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Given the totality of the circumstances, the Panel agrees with Complainant’s unsupported contention. Thus, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Complainant further contends that Respondent’s passive holding of the <nike.com.ro> domain name constitutes bad faith under Policy ¶ 4(a)(iii). Complainant’s Exhibit H shows a screenshot of the <nike.com.ro> disputed domain name with an error message. Panels have found such inactive use to constitute bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Therefore, the Panel finds that Respondent’s passive holding of the <nike.com.ro> domain name constitutes bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that there is no conceivable use of the disputed domain name by Respondent that would not infringe on Complainant’s NIKE mark, and that Respondent has engaged in opportunistic bad faith under Policy ¶ 4(a)(iii). Panels have found bad faith registration and use where it is inconceivable that the respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. See Indymac Bank v. Hogan, FA 220042 (FORUM Jan. 28, 2004) (holding respondent’s passive holding of the domain name constitutes bad faith and stating “The Panel will not wait until the domain names have actually been used before finding bad faith because it is inconceivable that [r]espondent could use the domain names in a manner that would not infringe upon [c]omplainant’s mark…”); see also 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 complaint suggests opportunistic bad faith.”).
Therefore, the Panel finds that Respondent has engaged in opportunistic bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <nike.com.ro> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: June 2, 2016
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