Nike, Inc. v. Lin Hai Bo
Claim Number: FA0509000567694
Complainant is Nike, Inc. (“Complainant”), represented by Philip Davison, One Bowerman Drive, DF/4, Beaverton, OR 97005. Respondent is Lin Hai Bo (“Respondent”), 3/F., No. 2 Building, 99 Dajinkou, Jinjiang Fujian, 362200 cn.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <niketrader.com>, registered with Bizcn.com, Inc.
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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 27, 2005. The Complaint was submitted in both Chinese and English.
On September 27, 2005, Bizcn.Cc, Inc. confirmed by e-mail to the National Arbitration Forum that the <niketrader.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 4, 2005, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@niketrader.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <niketrader.com> domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <niketrader.com> domain name.
3. Respondent registered and used the <niketrader.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nike, Inc., designs, manufactures and markets a
wide range of athletic and athleisure footwear, apparel and equipment.
Complainant holds numerous registrations for the NIKE mark
(U.S. Reg. Nos. 978,952 issued February 19, 1974; 1,153,938 issued May 12,
1981; and 1,243,248 issued June 21, 1983) with the United States Patent and
Trademark Office (“USPTO”) and with many other national authorities throughout
the world.
Complainant has invested millions of dollars to advertise
and promote its NIKE mark and has also sold billions of dollars in merchandise
under the mark. As a result of
Complainant’s efforts, the NIKE mark has become famous and represents extremely
valuable goodwill associated with Complainant.
Respondent registered the <niketrader.com> domain name on December 27, 2003. There is no indication as to how Respondent is using 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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has provided proof of its registration of its
NIKE mark with the USPTO. Complainant’s
registration of its mark with a national authority establishes a prima facie
case of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The <niketrader.com> domain name incorporates Complainant’s well-known NIKE mark in its entirety and adds a generic or descriptive term and the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD to a mark is irrelevant in determining similarity, because a top-level domain of some kind is required to register a domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Furthermore, the addition of a generic or descriptive term to a famous mark such as NIKE is insufficient to create a domain name that is distinct from the mark. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held:
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Id.; see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”). Complainant asserts that Respondent does not
have rights or legitimate interests in the <niketrader.com> domain
name, because the disputed domain name contains Complainant’s registered NIKE
mark and Respondent is not commonly known by the disputed domain name nor
authorized to use the mark in any way.
The Panel finds that this is sufficient to establish a prima facie
case under Policy ¶ 4(a)(ii) and to shift the burden to Respondent. However, based upon its evaluation of all
evidence in the record, the Panel determines that Respondent has not succeeded
in demonstrating rights to or legitimate interests in the domain name for
purposes of defeating Complainant’s claim under Policy ¶ 4(a)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark); see also G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant registered its NIKE mark with the USPTO nearly thirty years before Respondent registered the <niketrader.com> domain name. Furthermore, Respondent’s address is listed in China, and Complainant registered the NIKE mark with the Chinese trademark authority nearly seven years prior to the domain name registration. Due to these governmental registrations, Respondent had constructive notice of Complainant’s rights in the NIKE mark at the time it registered the disputed domain name. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”). Additionally, the worldwide fame associated with Complainant and its NIKE mark suggests that Respondent had actual knowledge of the mark when it registered a domain name containing the mark. In light of the preceding circumstances, the Panel finds that Respondent registered the disputed domain name with actual and constructive knowledge of the disputed domain name and that this is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that “[i]n light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time [Respondent] registered the disputed domain name” and such knowledge constituted bad faith); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) (“Given the uniqueness and the extreme international popularity of the [ODIE] mark, Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
The Panel finds that Complainant has satisfied the requirements of 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 <niketrader.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 14, 2005
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