NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot
Claim Number: FA1703001723952
Complainant is NIKE, Inc. and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is michal restl c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nıke.com>, registered with Dynadot, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2017; the Forum received payment on March 27, 2017.
On March 30, 2017, Dynadot, LLC confirmed by e-mail to the Forum that the <nıke.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@xn--nke-jua.com. Also on April 4, 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 May 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 issues 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
1. Complainant, Nike, Inc., is a global provider of athletic footwear, apparel, electronic devices, digital applications and equipment. In furtherance of its business, Complainant has registered the NIKE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 978,952, registered Feb. 19, 1974) See Compl., at Attached Ex. D. Respondent’s <nıke.com> is identical to the NIKE mark because it replaces the letter “I” in the mark with the non-ANSII Turkish dotless “ı” which is visually identical to Complainant’s mark, and the addition of the generic top-level domain (“gTLD”) “.com” is an irrelevant addition.
2. Respondent has no rights or legitimate interests in <nıke.com>. Complainant has not licensed or otherwise permitted Respondent to use the NIKE mark and Respondent is not otherwise commonly known by <nıke.com>. Respondent has caused <nıke.com> to resolve to a page designed to monetize the domain names through click-through fees associated with hyperlinks. See Compl., at Attached Ex. E. This use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent has registered and used <nıke.com> in bad faith. Respondent has used confusingly similar domain names to attract and confuse Internet users for commercial profit—conduct proscribed by Policy ¶ 4(b)(iv). Finally, the use Respondent made of the NIKE mark also evinces Respondent’s actual knowledge of Complainant’s rights in the mark. Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent did not submit a Response.
PRELIMINARY ISSUE: DOMAIN NAME CHARACTERS
According to Complainant, the “ı” in <nıke.com> represents the non-ANSII Turkish dotless “ı” character and falls within the category of domains known as “internationalized domain names” (“IDN”s). The domain name, as seen in the WHOIS information of record, is translated in Punycode as <xn--nke-jua.com>. Panels have treated Punycode iterations of domain names in an identical manner with their IDN counterparts. See, e.g., Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010); Cable News Network, Inc. v. Guowei Hai Gui, FA1426475 (Forum Mar. 13, 2012); Watts Water Tech. Inc. v. Am. WATS Valve Group, FA1464841 (Forum Nov. 21, 2012). Therefore, the Panel determines that proceeding to analyze the IDN <nıke.com> rather than its Punycode <xn--nke-jua.com> is proper as they are equivalent.
1. Respondent’s <nike.com> domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nike.com> domain name.
3. Respondent registered or used the <nike.com> domain name in bad faith.
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.”).
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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant contends Respondent has no rights or legitimate interests in <nıke.com>. Complainant claims that Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted to use the NIKE mark in any respect. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “michal restl c/o Dynadot.” In addition, failure to establish authorization approval for a Respondent to use Complainant’s mark can be evidence of a lack of rights or legitimate interests in a confusingly similar domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant alleges Respondent has not made a bona fide offering of goods or services, or legitimate noncommercial or fair use of the disputed domain names. Complainant declares Respondent has caused <nıke.com> to resolve to a parking page designed to monetize the domain names through click-through fees associated with hyperlinks. See Compl., at Attached Ex. E. Panels have found such use to amount to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). Therefore, this Panel agrees that the mere inclusion of competing hyperlinks on a parked page does not rise to the level of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent has registered and used <nıke.com> in bad faith. Respondent has used confusingly similar domain names to attract and confuse Internet users for commercial profit—conduct proscribed by Policy ¶ 4(b)(iv). In T-Mobile USA, Inc. v. utahhealth, the Panel found that registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a parked “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv). FA 697821 (Forum June 7, 2006). Complainant seeks to remind the Panel of Exhibit E attached to the Complaint, which shows a resolving screenshot of <nıke.com> which include a number of hyperlinks. The Panel finds the circumstances of the instant dispute similar to those in T-Mobile and determine that Respondent has registered and used the disputed domain to presumably profit from click through-hyperlink clicks by confused Internet users and thus exhibits bad faith under the language of Policy ¶ 4(b)(iv).
Complainant additionally argues that Respondent registered the disputed domain name with full knowledge of Complainant’s prior use of, rights in, and goodwill associated with the NIKE mark. Under Policy ¶ 4(a)(iii), such notice may constitute bad faith. Complainant first alleges that the NIKE mark has achieved such worldwide fame and recognition that Respondent must have had actual notice of its rights in the mark. See Enterprise Holdings, Inc. v. DomainManager/Domain Escrow, FA 1205001444228 (Forum June 28, 2012) (“The Panel finds that, due to the fame of Complainant’s [ENTERPRISE] mark, Respondent had actual knowledge of the mark and Complainant’s rights.”). Complainant alleges that the mere replacement of the letter “I” in the NIKE mark with a visually similar dotless “ı” character evidences Respondent’s prior knowledge of Complainant’s rights in the NIKE Mark. The Panel may infer actual notice from the totality of the circumstances. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant”). Thus, the Panel concludes that Respondent had actual notice of Complainant’s rights in the NIKE mark when it registered the <nıke.com> domain name, and that such notice constitutes bad faith pursuant to 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 <nıke.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page