NIKE, Inc. and Nike Innovate, C.V. v. xinqian Rhys / Dan Thurston / wenben zhou
Claim Number: FA1701001713345
Complainant is NIKE, Inc. and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is xinqian Rhys / Dan Thurston / wenben zhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nikesell.com>, <nikelebronshoes.com> and <nikestoreaustralias.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2017; the Forum received payment on January 19, 2017.
On January 20, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nikesell.com>, <nikelebronshoes.com> and <nikestoreaustralias.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 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@nikesell.com, postmaster@nikelebronshoes.com, postmaster@nikestoreaustralias.com. Also on January 20, 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 February 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the NIKE mark (e.g., Reg. No. 978,952, registered February 19, 1974) and the LEBRON mark (e.g., Reg. No. 3,370,246, registered January 15, 2008), collectively referred to as (“NIKE Marks”) with the United States Patent and Trademark Office (“USPTO”). Complainant also registered the NIKE mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,105,802, registered September 21, 1997). Respondent’s <nikesell.com>, <nikelebronshoes.com>, and <nikestoreaustralias.com> disputed domain names are confusingly similar to the NIKE Marks. Respondent’s <nikesell.com> combines the NIKE mark with the word “sell”; <nikelebronshoes.com> combines the NIKE and LEBRON marks with the word “shoes”; and <nikestoreaustralias.com> combines the NIKE mark with the word “store” and the geographic term “australias”. All of the additions to the NIKE Marks are generic terms. Additionally, all of the disputed domain names add the generic top-level domain “.com” (“gTLD”).
Respondent has no rights or legitimate interests in <nikesell.com>, <nikelebronshoes.com>, and <nikestoreaustralias.com>. The WHOIS identifies “xinqian Rhys,” “Dan Thurston,” and “wenben zhou” as registrants. There is no evidence that Respondent has ever been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the NIKE Marks. Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, as Respondent uses the subject domain names to pass itself off as Complainant, misdirecting customers to a directly competitive website by causing customer confusion.
Respondent registered and is using the <nikesell.com>, <nikelebronshoes.com>, and <nikestoreaustralias.com> domain names in bad faith. Respondent attempts to pass off as Complainant to commercially benefit from Complainant’s fame by registering and commercially using a confusingly similar domain name to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. Respondent also prominently displays the NIKE and NIKE swoosh marks on the websites. Finally, Respondent must have actual knowledge of Complainant, evinced by the use of the NIKE and NIKE swoosh marks, and by the registration of confusingly similar domain names that are obviously connected with a particular trademark owner by someone with no connection to the trademark owner.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is NIKE, Inc. and NIKE Innovate of Beaverton, OR, USA. Complainant is the owner of domestic and international registrations for the mark NIKE and related marks which it has used continuously since at least as early as 1982 in connection with its provision of footwear, sportswear and athletic equipment.
Respondent is Xinqian Rhys / Dan Thurston / Wenben Zhou, of China. Respondent’s registrar’s addresses are China and the UK. The Panel notes that Respondent registered <nikesell.com>, <nikelebronshoes.com>, and <nikestoreaustralias.com> on or about April 20, 2016, March 2, 2015, and April 22, 2016, respectively.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities that control the domain names at issue are effectively controlled by one person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is a notorious and prolific cybersquatter who has been sued or enjoined for cybersquatting by countless famous brands for that issue. When examining the WHOIS information for the various other NIKE-infringing domain names, some of the WHOIS information is the exact same. One false identity, “xinquian Rhys”, used to register the disputed domain name <nikesell.com>, was also used to register a different fraudulent domain name, nikecheapgoods.com. The WHOIS information for that domain name shares the same registrar, name, and address as <nikesell.com>, except with a different email address, “dddpppeee@yahoo.com”. In turn, Respondent used that email address to register the disputed domain name <nikelebronshoes.com>. Similarly, the WHOIS information for the domain name nikesoccercleats2016.com listed the email address “dddpppeee@yahoo.com”, along with the false identity “wenben zhou”, used for the third disputed domain name <nikeaustralias.com>. Additionally, Respondent uses one of several common-template websites to sell counterfeit NIKE goods in each of the disputed domain names.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the domain names and listed entities are
commonly owned/controlled by a single Respondent who is using multiple aliases.
Complainant registered the NIKE (e.g., Reg. No. 978,952, registered February 19, 1974), LEBRON (e.g., Reg. No. 3,370,246, registered January 15, 2008), and the NIKE swoosh logo (e.g., Reg. No. 1,237,469, registered May 10, 1983) marks (“Marks”) with the United States Patent and Trademark Office (“USPTO”).. Complainant also registered the NIKE mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,105,802, registered September 21, 1997). Past panels have held that such registrations demonstrate a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Guess? IP Holder L.P. and Guess?, Inc. v. zhou hong hai, FA 1610066 (Forum May 1, 2015) (determining that “Complainant’s USPTO and SAIC registrations are sufficient to establish Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the NIKE Marks for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <nikesell.com>, <nikelebronshoes.com>, and <nikestoreaustralias.com> domain names are confusingly similar as they incorporate Complainant’s NIKE Marks while adding generic or geographic terms. Changes of this manner have not been found to be distinguishing. See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.); Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Similarly, Prior panels have held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See 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.”). Here, Respondent’s <nikesell.com> combines the NIKE mark with the word “sell”; <nikelebronshoes.com> combines the NIKE and LEBRON marks with the word “shoes”; and <nikestoreaustralias.com> combines the NIKE mark with the word “store” and the country “Australia.” The Panel here finds that Respondent has not included elements in the domain name that provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in <nikesell.com>, <nikelebronshoes.com>, and <nikestoreaustralias.com>. Generally, where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS recognizes Respondent as “xinqian Rhys,” “Dan Thurston,” and “wenben zhou” as registrant. Complainant argues there is no evidence that Respondent has ever been known by the disputed domain names prior to its registration, and Complainant has not given Respondent permission to use any of the NIKE Marks. The Panel here finds that Respondent is not commonly known by <nikesell.com>, <nikelebronshoes.com>, or <nikestoreaustralias.com> under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent’s actions are not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names because it attempts to pass itself off as Complainant and sell Complainant’s goods. Prior panels have concluded that attempting to pass off as a complainant demonstrates lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant argues Respondent uses the subject domain names to pass itself off as Complainant, misdirecting customers to a directly competitive website by causing customer confusion. Additionally, the disputed domain names prominently use the NIKE mark, as well as the use of the NIKE and swoosh design mark, and purports to sell NIKE goods. The Panel finds that Respondent’s actions are not a bona fide offering of goods or services.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent attempted to use Complainant’s fame by registering and commercially using a confusingly similar domain name to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the respondent’s website. Respondents using similar domain names and selling competing products can evince bad faith use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent’s behavior indicates bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <nikesell.com>, <nikelebronshoes.com> and <nikestoreaustralias.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 6, 2017
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