DECISION

 

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

Claim Number: FA1705001732459

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nike--store.us>, <nike-id.us>, and <nikecom.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

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 20, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <nike--store.us>, <nike-id.us>, and <nikecom.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@nike--store.us, postmaster@nike-id.us, postmaster@nikecom.us.  Also on May 24, 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 19, 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 to the usTLD Dispute Resolution Policy (“Rules”).  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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

1.    Complainant manufactures and sells athletic wear, and has registered the NIKE (Reg. No. 978,952, registered Feb. 19, 1974) and NIKEID (Reg. No. 3,434,532, registered May 27, 2008) marks (collectively called NIKE marks) with the United States Patent and Trademark Office in furtherance of its business. See Compl., at Attached Ex. D & G.. Respondent’s <nike--store.us>,<nike-id.us>, and <nikecom.us> domain names are all confusingly similar to Complainant’s NIKE marks because the domain names incorporate at least one of Complainant’s marks in its entirety and merely add the generic term “store” or “com”, inserts a hyphen, and adds the country-code top-level domain name (“ccTLD”) “.us.”

2.    Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its NIKE marks. Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to impersonate NIKE and misdirect consumers to its commercial website, which prominently display NIKE marks, along with the famous “Swoosh Design” mark.. See Compl., at Attached Ex. H. By using Complainant’s marks, Respondent is attempting to create confusion as to the affiliation or sponsorship of its website, at which Respondent sells either Complainant’s or Complainant’s competitors’ products. Id.

3.    Respondent has registered and is using the disputed domain names in bad faith. Respondent is attempting to pass off as Complainant by using the disputed domain name to resolve to a website prominently displaying Complainant’s marks. See Compl., at Attached Ex. H. Respondent is using the disputed domain name to create confusion as to the source, affiliation or sponsorship of its website for commercial gain. Furthermore, Respondent has registered multiple domain names to achieve its unlawful purposes. Moreover, Respondent had actual knowledge of Complainant’s NIKE mark, which is evinced by the fact that Respondent uses NIKE marks on its webpages which are hosted at the subject domain names.

 

B.   Respondent

1.    Respondent did not submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <nike--store.us>, <nike-id.us>, and <nikecom.us> domain names are confusingly similar to Complainant’s NIKE mark.

2.    Respondent does not have any rights or legitimate interests in the <nike--store.us>, <nike-id.us>, and <nikecom.us> domain names.

3.    Respondent registered or used the <nike--store.us>, <nike-id.us>, and <nikecom.us> 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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 asserts that it has established rights in the NIKE (Reg. No. 978,952, registered Feb. 19, 1974) and NIKEID (Reg. No. 3,434,532, registered May 27, 2008) marks via its registration of those marks with the USPTO. See Compl., at Attached Ex. D & G. Registration of a mark with the USPTO sufficiently establishes rights in that mark.  See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore the Panel finds that Complainant has established rights in the NIKE marks.

 

Complainant argues that Respondent’s <nike--store.us>, <nike-id.us>, <nikecom.us> domain names are confusingly similar to Complainant’s NIKE marks because the domain names incorporate one of Complainant’s mark in its entirety and merely add the generic term “store” or “com”, inserts a hyphen, and adds the ccTLD “.us.” The addition of generic terms like “store” are not sufficient to eliminate confusing similarity. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Further, the addition of “com” is particularly unhelpful in creating a distinction between a domain name and a mark. See Borders Props., Inc. v. Hewitt, FA 114618 (Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error.  It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). Finally, the addition of hyphens and ccTLDs are irrelevant to the confusingly similar analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s NIKE marks in which Complainant has rights.

 

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 is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its NIKE marks. Where a respondent fails to submit a response, the Panel looks to the WHOIS information to determine whether Respondent is 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 on record lists “Emile Boulanger” as the registrant name for all the domain names. See Compl., at Attached Ex. A. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the NIKE marks can further support a finding that Respondent does not have rights or legitimate interests in the disputed domain name. 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). Therefore, the Panel concludes that Respondent is not commonly known by the <nike--store.us>, <nike-id.us>, and <nikecom.us> domain names.

 

The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain names, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sep. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Complainant argues that Respondent is not using the <nike--store.us>, <nike-id.us>, and <nikecom.us> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant insists that Respondent is using the disputed domain names to create confusion as to the source, affiliation and sponsorship of its commercial website and thereby misdirect Complainant’s potential clients to its own website, on which Respondent sells competing products. Using a domain name to lure Complainant’s clients to a website that sells competing products is not a bona fide offering of goods or services or a legitimate noncommercial fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). The disputed domain names resolve to websites that sell athletic footwear, which would directly compete with Complainant’s business. See Compl., at Attached Ex. H. Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Complainant also argues that Respondent is attempting to pass off as Complainant for the purposes of generating traffic to its commercial website. A respondent is not using a domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use if the respondent is using the domain name to pass off as the complainant. 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). Passing off can be evinced by similarities between Respondent’s resolving website and Complainant’s website. Id. The Panel notes the similarities between the commercial websites of Respondent and Complainant, especially each party’s use of the “swoosh design” mark at the top of their respective websites. Compare Compl., at Attached Ex. B (displaying Complainant’s website) with Compl., at Attached Ex. H (displaying Respondent’s website). Therefore, the Panel finds that Respondent is attempting to pass off as Complainant and therefore that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

Registration or Use in Bad Faith

Complainant references Respondent’s registration of multiple domain names in the current proceeding as indicative of bad faith. Registration of multiple disputed domain names at issue in a UDRP proceeding can evince that those domain names were registered in bad faith. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 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)). All three of the disputed domain names at issue in this proceeding incorporate one of the NIKE marks. Therefore, the Panel finds that Respondent has registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii)).

 

Next, Complainant argues that Respondent is using the <nike--store.us>, <nike-id.us>, and <nikecom.us> domain names to create confusion as to the source, affiliation or sponsorship of its website in order to attract customers for commercial gain. Using a disputed domain name to confuse Complainant’s clients and misdirect them to a website selling competing products is evidence of bad faith registration and use. See 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 disputed domain names resolve to websites that purport to sell athletic footwear, which would directly compete with Complainant’s business. See Compl., at Attached Ex. H. The sale of either legitimate products or counterfeit ones does not alter the bad faith analysis. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use); see also Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). Therefore, the Panel finds that Respondent uses the disputed domain names to attract customers for commercial gain and therefore that Respondent has registered and is using the disputed domain name in bad faith.

 

Complainant also argues that Respondent is attempting to pass off as Complainant in order to carry out its competing business. An attempt by a respondent to pass off as a complainant by using the disputed domain name to resolve to a website that imitates the complainant’s website supports a finding of bad faith. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). The Panel notes the similarities between the commercial websites of Respondent and Complainant, especially each parties’ use of the “swoosh design” mark at the top of their respective websites. Compare Compl., at Attached Ex. B (displaying Complainant’s website) with Compl., at Attached Ex. H (displaying Respondent’s website). Therefore, the Panel finds that Respondent is attempting to pass off as Complainant in bad faith per Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent had actual knowledge of its rights, evinced by Respondent’s use of Complainant’s NIKE marks on its webpages, and therefore that Respondent has registered and is using the disputed domain names in bad faith. A respondent’s use of a disputed domain name to resolve to a webpage prominently displaying Complainant’s marks is evidence that Respondent had actual knowledge of Complainant’s rights in that mark, and thus registered the domain name in bad faith. 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 Policy ¶ 4(a)(iii).”). The Panel notes the similarities between the commercial websites of Respondent and Complainant, especially each party’s use of the “swoosh design” mark at the top of their respective websites. Compare Compl., at Attached Ex. B (Complainant’s own website) with Compl., at Attached Ex. H (Respondent’s use of the domain names). Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the NIKE marks and therefore that Respondent registered and uses the <nike--store.us>, <nike-id.us>, and <nikecom.us> domain names in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <nike--store.us>, <nike-id.us>, and <nikecom.us> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  June 30, 2017