NIKE, Inc. and Nike Innovate, C.V. v. RAM PATEL
Claim Number: FA1607001684705
Complainant is NIKE, Inc. and Nike Innovate, C.V. (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is RAM PATEL (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nikefreedeal.com>, registered with eNom, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2016; the Forum received payment on July 20, 2016.
On July 21, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <nikefreedeal.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2016 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@nikefreedeal.com. Also on July 22, 2016, 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 August 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, NIKE Inc., has used the <nikefreedeal.com> mark in connection with its business selling sports shoes and apparel.
Complainant’s rights in the NIKE mark stem from multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 978,952, registered Feb. 19, 1974).
Respondent’s domain <nikefreedeal.com> is confusingly similar to the NIKE mark as the domain merely adds the descriptive phrase “free deal,” and the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not known by the disputed domain name, licensed to use Complainant’s NIKE mark, nor does Respondent have any legal relationship with Complainant that would allow for use of the mark. Additionally, Respondent’s use of the domain, to impersonate Complainant and attempt to get consumers to install advertising apps on their computers, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s attempt to pass itself off as Complainant demonstrates bad faith. Respondent had knowledge of Complainant’s rights in the NIKE mark based on the international fame and recognition that the mark holds. The registration of a domain name that is confusingly similar to a famous trademark further suggests bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for the NIKE mark.
Respondent is not authorized to use Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in the NIKE trademark.
Respondent is using the at-issue domain name to address a website which is designed to impersonate Complainant and allow Respondent to profit from misdirected internet traffic.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the NIKE mark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademarks’ registrars. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name contains Complainant’s entire NIKE mark followed by the generic terms “free” and “deal” and the top-level domain name “.com.” Adding descriptive words to Complainant’s trademark does nothing to distinguish the <nikefreedeal.com> domain name from Complainant’s trademark, particularly when the added terms obliquely suggest Complainant’s retail related business. See Disney Enter. v. Kudrna, FA 686103 (Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)). Furthermore, the necessary inclusion of a top-level domain name, here “.com,” is generally irrelevant to Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (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.”). Therefore the Panel concludes that the Respondent’s <nikefreedeal.com> domain name is confusingly similar to Complainant’s NIKE mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “RAM PATEL” as the domain name’s registrant and there is nothing in the record that otherwise indicates Respondent is commonly known as <nikefreedeal.com>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s domain name addresses a website that displays the message, “Welcome to nike Free deal promotion website. You have been invited by your friend and you can get 1 FREE Nike Shoe for men or Women. Just choose your style below and enter your shipping address and your Shoe will be shipped for free within 3 working days All over the United States.” One of the links directs the user to a page where he or she must fill out a survey to enter a shipping address. Adding to the confusion, Respondent’s website also displays Complainant’s trademarked design logo. Using the confusingly similar domain name in this manner for Respondent’s benefit and to deceptively gain the personal information of visitors to the domain name’s website is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name. See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts 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 also Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent's attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant's was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy4(a)(ii)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As elaborated above regarding rights and interest Respondent uses the domain name to pass itself off as Complainant so that it might capitalize on misdirected traffic to its <nikefreedeal.com> website. Such use of the domain name demonstrates Respondent’s bad faith registration and use of the <nikefreedeal.com> domain name pursuant to 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.”).
Additionally, Respondent registered the <nikefreedeal.com> domain name knowing that Complainant had trademark rights in the NIKE mark. Respondent’s prior knowledge is evident because of the high notoriety of Complainant’s trademark as well as Respondent’s use of Complainant’s mark on the <nikefreedeal.com> website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit the domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <nikefreedeal.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nikefreedeal.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 18, 2016
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