DECISION

 

NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger

Claim Number: FA1705001732458

 

PARTIES

Complainant is NIKE, Inc., and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA.  Respondent is Emile Boulanger (“Respondent”), France.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nikehuarache.co>, registered with NameCheap, Inc.; <nike-airmax.org>, <nike-shoes.org>, and <jordanshoes.co>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; and <nikeoutlet.net> registered with 1API GmbH.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 18, 2017; the Forum received payment on May 18, 2017.

 

On May 19, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <nikehuarache.co> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 20, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <nikeairmax.org>, <nikeshoes.org>, and <jordanshoes.co>, domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 23, 2017, 1API GmbH confirmed by e-mail to the Forum that the <nikeoutlet.net> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name.  1API GmbH has verified that Respondent is bound by the 1API GmbH 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 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@nikeoutlet.net, postmaster@nike-airmax.org, postmaster@nike-shoes.org, postmaster@nikehuarache.co, and postmaster@jordanshoes.co.  Also on May 25, 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 20, 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant contends it registered its NIKE, AIR MAX, and AIR JORDAN marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 978,952, registered Feb. 19, 1974; Reg. No. 1,508,348, registered Oct. 11, 1988; Reg. No. 1,370,283, registered Nov. 12, 1985), and has rights in the marks under Policy ¶ 4(a)(i). Complainant also has rights in its AIR HUARACHE and JORDAN marks through registration with the European Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 014,405,277, registered Dec. 1, 2016; Reg. No. 006,792,485, registered Dec. 12, 2008). The disputed domain names are identical or confusingly similar to Complainant’s marks because each fully incorporates a mark or multiple marks and differs only from the marks by the appendage of a generic top-level domain (“gTLD”) or the appendage of hyphen followed by a descriptive term and a generic top-level domain

(“gTLD”).

2.    Respondent lacks rights and legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its marks in any fashion, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. A. Respondent’s use of the disputed domain names to sell counterfeit products and attempts to distribute malware on to Internet users’ computers cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

3.    Respondent has registered and is using the disputed domain names in bad faith. In the present case, Respondent demonstrates a pattern of bad faith registration and use by registering five domain names that infringe on Complainant’s rights. Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by selling counterfeit versions of Complainant’s products. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the NIKE mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant as well as selling counterfeit versions of Complainant’s products. Respondent’s bad faith is further evidenced by its actual knowledge of Complainant’s rights and attempts to distribute malware through the sites.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <nikeoutlet.net>, <nike-airmax.org>, <nike-shoes.org>, <nikehuarache.co>, <jordanshoes.co> domain names are confusingly similar to Complainant’s NIKE, AIR MAX, AIR JORDAN, AIR HUARACHE AND JORDAN marks.

2.    Respondent does not have any rights or legitimate interests in the <nikeoutlet.net>, <nike-airmax.org>, <nike-shoes.org>, <nikehuarache.co>, <jordanshoes.co> domain names.

3.    Respondent registered or used the <nikeoutlet.net>, <nike-airmax.org>, <nike-shoes.org>, <nikehuarache.co>, <jordanshoes.co> domain names in bad faith.

 

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."

 

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.”).

 

Identical and/or Confusingly Similar

Complainant contends it registered its NIKE, AIR MAX, and AIR JORDAN marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 978,952, registered Feb. 19, 1974; Reg. No. 1,508,348, registered Oct. 11, 1988; Reg. No. 1,370,283, registered Nov. 12, 1985), and has rights in the marks under Policy ¶ 4(a)(i). See Compl., at Attached Ex. D–G. A USPTO registration confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Complainant contends it registered its AIR HUARACHE and JORDAN marks with the OHIM (Reg. No. 014,405,277, registered Dec. 1, 2016; Reg. No. 006,792,485, registered Dec. 12, 2008). Registration with the OHIM is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s OHIM trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has rights in the NIKE, AIR MAX, AIR JORDAN, AIR HURACHE, and JORDAN marks.

 

Complainant asserts that the disputed domain names are identical or confusingly similar to Complainant’s marks because each fully incorporates a mark or multiple marks and differs only from the marks by (1) the appendage of a generic top-level domain (“gTLD”) or (2) the appendage of hyphen followed by a descriptive term and a gTLD. Domain names that fully incorporate a complainant’s mark and simply append a gTLD are considered identical to the mark they incorporate. See SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Additionally, the appendage of a hyphen, a descriptive terms, and a gTLD is considered insufficient to negate confusing similarity. Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s

mark.”). Therefore, the Panel holds that the disputed domain names are identical or confusingly similar to Complainant’s marks.

 

Rights or Legitimate Interests

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 asserts that Respondent has not rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its marks in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. The Panel notes that the disputed domain names’ WHOIS information of record lists “EMILE BOULANGER” as the registrant. See Compl., at Attached Ex. A. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain names.

 

Next Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain names. Respondent is using the resolving webpage to pass itself off or foster confusion of affiliation to Complainant by imitating Complainant’s <nike.com> website and selling counterfeit versions of Complainant’s products. See Compl., at Attached Exs. F, M. Attempting to pass off as the complainant for the purpose of selling counterfeit versions of the complainant’s products cannot be construed as a bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Here, Complainant has provided screenshots of the disputed domain names’ resolving websites which display Complainant’s marks and offer to sell fake versions of Complainant’s products. See Compl., at Attached Ex. M. Therefore, the Panel holds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain names.

 

Furthermore, Complainant also alleges that some of the disputed domain names’ resolving websites attempt to install a virus on Internet users’ computers. See Compl., at Attached Ex. M. This is further evidence of a lack of any legitimate interests in the domain names. See Baker v. J M, FA 1259254 (Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). For the applicable domain names, Complainant has provided screenshots showing the pop-up virus warning that is generated upon reaching the resolving websites. See Compl., at Attached Ex. M. Therefore, the Panel views this information as further evidence of Respondent’s lack of legitimate interests in the domain names.

 

Registration and Use in Bad Faith

Complainant contends that Respondent has demonstrated a pattern of bad faith registration and use under the Policy due to the amount of disputed domain names in the present case. Registration of multiple domain names in a current proceeding is evidence of bad faith. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, Respondent has registered five infringing domain names including <nikeoutlet.net>, <nike-airmax.org>, <nike-shoes.org>, <nikehuarache.co>, and <jordanshoes.co>. Therefore, the Panel holds that Respondent has engaged in a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii).

 

Complainant asserts that Respondent is disrupting its business by attempting to divert potential customers away from Complainant by imitating Complainant using a confusingly similar domain name to resolve to a website almost identical to Complainant’s or prominently displaying Complainant’s marks, logos and products. Registration and use of a domain name to display a website identical to a complainant’s is considered bad faith under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Further, using a disputed domain name to sell counterfeit goods is also considered disruptive. See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)). Complainant has provided screenshot evidence of Respondent’s resolving webpage which displays content nearly identical to Complainant’s <nike.com> website and offers counterfeit products. See Compl., at Attached Exs. H, M. As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).

 

Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the NIKE mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Further, Respondent purports to be Complainant through its use of the resolving websites to sell counterfeit versions of Complainant’s products. See Compl., at Attached Ex. M. Such use creates confusion as to Respondent’s affiliation with Complainant. See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Therefore, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant also contends that in light of the fame and notoriety of Complainant’s  NIKE mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").

 

However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (FORUM Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s  NIKE mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 1974. See Compl., at Attached Ex. D. Respondent’s use of the websites to sell counterfeit versions of Complainant’s products is further evidence of actual notice. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the disputed domain names were registered and subsequently used.

 

Finally, the Panel may note that the Complainant has provided screenshots of the disputed domain names’ resolving websites. See Compl., at Attached Ex. M. Complainant contends that upon opening some of the disputed domain names’ websites, the server attempts to install a computer virus on the browsing computer. Id. Distribution of malware through a disputed domain name’s resolving website is considered bad faith pursuant to Policy ¶ 4(b)(iv)). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). Therefore, the Panel concludes that Respondent acted in bad faith by attempting to distribute malware through the disputed domains.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nikeoutlet.net>, <nike-airmax.org>, <nike-shoes.org>, <nikehuarache.co>, and <jordanshoes.co> domain names be TRANSFERRED from Respondent to Complainant.

 

                                                                       

                                                                                                                John J. Upchurch, Panelist

                                                                                    Dated:  July 3, 2017