NIKE, Inc. and Nike Innovate, C.V. v. Vilja Martinsson
Claim Number: FA1611001701188
Complainant is NIKE, Inc. and Nike Innovate, C.V. (collectively, “Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Vilja Martinsson (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nikeclassical.com>, <nikefactorystoresoutlet.com>, <nikefavorite.com>, <nikehottop.com>, <nikemanage.com>, <nikenewfashion.com>, <nikenewshop.com>, <nikeonlinemall.com>, and <nikesellings.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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 November 2, 2016; the Forum received payment on November 2, 2016.
On November 15, 2016, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <nikeclassical.com>, <nikefactorystoresoutlet.com>, <nikefavorite.com>, <nikehottop.com>, <nikemanage.com>, <nikenewfashion.com>, <nikenewshop.com>, <nikeonlinemall.com>, and <nikesellings.com> domain names are registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 November 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@nikeclassical.com, postmaster@nikefactorystoresoutlet.com, postmaster@nikefavorite.com, postmaster@nikehottop.com, postmaster@nikemanage.com, postmaster@nikenewfashion.com, postmaster@nikenewshop.com, postmaster@nikeonlinemall.com, postmaster@nikesellings.com. Also on November 9, 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 December 12, 2016, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, NIKE, Inc. and Nike Innovate, C.V. (collectively, “Complainant”), is a global provider of athletic footwear, apparel, electronic devices, digital applications, and equipment. Complainant uses their NIKE mark to market their goods and services throughout the world, including in the US and the European Union, and claims rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO) as well as other trademark agencies throughout the world (e.g., Reg. No. 978,952, registered Feb. 19, 1974). See Compl., at Attached Ex. D. Respondent’s disputed domain names all contain Complainant’s NIKE mark in its entirety, each merely appending a generic or descriptive term or terms and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by <nikeclassical.com>, <nikefactorystoresoutlet.com>, <nikefavorite.com>, <nikehottop.com>, <nikemanage.com>, <nikenewfashion.com>, <nikenewshop.com>, <nikeonlinemall.com>, or <nikesellings.com>, and Complainant has not given Respondent permission to use Complainant’s NIKE mark. Respondent’s domain names resolve to sites prominently displaying the NIKE mark as well as Complainant’s famous design marks in an attempt to impersonate and pass off as Complainant. Respondent also purports to sell Complainant’s goods at the resolving sites. Respondent’s use of the disputed domain names thus cannot be considered a bona fide offering of goods or services or a noncommercial or fair use under the Policy.
3. Respondent’s registration and use of the disputed domain names shows bad faith. Respondent is a “serial cybersquatter” with a history of registering infringing domain names, evidence of bad faith under Policy ¶ 4(b)(ii). Also, Respondent is attempting to confuse and attract Internet users for commercial gain, proscribed conduct under Policy ¶ 4(b)(iv). Moreover, Respondent clearly had actual knowledge of Complainant’s rights in the NIKE mark at the time Respondent registered the disputed domain names. Lastly, since the domain names are so obviously connected with Complainant’s NIKE trademark, Respondent’s registration and use of the domain names is evidence of Respondent’s opportunistic bad faith.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <nikeclassical.com>, <nikefactorystoresoutlet.com>, <nikefavorite.com>, <nikehottop.com>, <nikemanage.com>, <nikenewfashion.com>, <nikenewshop.com>, <nikeonlinemall.com>, and <nikesellings.com> domain names are confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or legitimate interests in the <nikeclassical.com>, <nikefactorystoresoutlet.com>, <nikefavorite.com>, <nikehottop.com>, <nikemanage.com>, <nikenewfashion.com>, <nikenewshop.com>, <nikeonlinemall.com>, and <nikesellings.com> domain names.
3. Respondent registered and used the <nikeclassical.com>, <nikefactorystoresoutlet.com>, <nikefavorite.com>, <nikehottop.com>, <nikemanage.com>, <nikenewfashion.com>, <nikenewshop.com>, <nikeonlinemall.com>, and <nikesellings.com> domain names 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 claims rights in the NIKE mark based upon registration of the mark with the USPTO (e.g., Reg. No. 978,952, registered Feb. 19, 1974). See Compl., at Attached Ex. D. Registration of a mark with the USPTO has been held to be sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel therefore holds that Complainant has established rights in the NIKE mark per Policy ¶ 4(a)(i).
Complainant also argues common law rights in the NIKE mark and provides evidence to support a secondary meaning in the mark. See Compl., at 3-5; Attached Ex’s B, C. Common law rights have been supported with evidence that leads to a secondary meaning associated with a mark. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004.”). Here, Complainant’s evidence can be found in the Complaint, pages 3-5 and in attached exhibits B and C. The Panel finds registration with the USPTO compelling to establish rights in Complainant’s mark, and find Complainant has common law rights in the mark.
Complainant next claims that Respondent’s disputed domain names are confusingly similar to the NIKE mark, as they incorporate the mark in its entirety, differing only through the addition of descriptive or generic terms and the gTLD “.com.” All of Respondent’s presently disputed domain names append the gTLD “.com.” Additionally, <nikeclassical.com> includes the descriptive or generic term “classical”, <nikefactorystoresoutlet.com> includes the descriptive or generic terms “factory stores outlet,” <nikefavorite.com> includes the descriptive or generic term “favorite,” <nikehottop.com> includes the descriptive or generic term “hot top,” <nikemanage.com> includes the descriptive or generic term “manage,” <nikenewfashion.com> includes the descriptive or generic term “new fashion,” <nikenewshop.com> includes the descriptive or generic term “new shop,” <nikeonlinemall.com> includes the descriptive or generic term “online mall,” and <nikesellings.com> includes the descriptive or generic term “sellings.” The addition of generic or descriptive words and a gTLD does not adequately distinguish a domain name from a complainant’s mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Accordingly, the Panel finds that the Respondent’s disputed domain names are confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
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 claims Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by <nikeclassical.com>, <nikefactorystoresoutlet.com>, <nikefavorite.com>, <nikehottop.com>, <nikemanage.com>, <nikenewfashion.com>, <nikenewshop.com>, <nikeonlinemall.com>, or <nikesellings.com>, and Complainant has not authorized Respondent to use Complainant’s NIKE mark for any purpose. The WHOIS information of record identifies Respondent as “Vilja Martinsson.” See Compl., at Attached Ex. A. Panels have found that 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). Panels have also held that respondents are not commonly known by a disputed domain name when there is no evidence in the record to show that the respondent had been authorized to register a domain name using a complainant’s mark. 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant argues that Respondent has not used the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims the disputed domain names serve to impersonate Complainant, misdirect consumers to directly competitive websites, and cause consumer confusion. The resolving websites appear to sell Complainant’s goods and the goods of its competitors. See Compl., at Attached Ex. G. Complainant also contends that Respondent’s websites are plainly designed to imitate and impersonate Complainant. Compare Compl., at Attached Ex. C and G. Panels have found the use of a mark to attract Internet users to sell a complainant’s goods does not amount to a bona fide offering. See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Panels have also found passing off behavior is evidence of a lack of rights or legitimate interests in a disputed domain name. See 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 Policy ¶ 4(a)(ii)). The Panel agrees that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use, and as such evinces a lack of rights or legitimate interests in the disputed domain names.
Complainant claims Respondent is a serial cybersquatter who targets famous brands, showing bad faith under Policy ¶ 4(b)(ii). To support this claim, Complainant points to Respondent’s use of multiple infringing domain names in the instant case, as well as Respondent’s history of infringing on other famous and distinctive marks. See Compl., at Attached Ex. I. Panels have found registration of multiple infringing domain names to be evidence of Policy ¶ 4(b)(ii) bad faith. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). The Panel finds this evidence convincing, and it finds Respondent registered the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant next claims Respondent’s registration and use of the disputed domain names is an attempt to pass off as Complainant and create a likelihood of consumer confusion. Respondent makes use of Complainant’s NIKE mark as well as Complainant’s various design marks on the resolving websites. See Compl., at Attached Ex. G. Complainant points out that since Respondent is selling Complainant’s goods, Respondent is commercially benefiting from its behavior. Panels have found a respondent acted in bad faith when its passing off behavior served to attract Internet users for commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel agrees and finds Respondent acted in bad faith as described in Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had actual or constructive knowledge of Complainant's rights in the NIKE mark. Complainant argues that Respondent's repeated use of Complainant’s word and design marks on webpages hosted at the disputed domain names indicates that Respondent had knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Lastly, Complainant contends that due to the distinctive fame of Complainant’s mark, and the fact that Respondent is not connected with Complainant is itself evidence of opportunistic bad faith. Complainant contends that the NIKE mark is so obviously connected with Complainant, that the domain names’ reference to the mark demonstrates Respondent’s bad faith. Panels have found evidence of opportunistic bad faith where respondents are not connected to complainants and are using a famous mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith). The Panel finds the argument compelling, and it holds Respondent acted in bad faith under 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 <nikeclassical.com>, <nikefactorystoresoutlet.com>, <nikefavorite.com>, <nikehottop.com>, <nikemanage.com>, <nikenewfashion.com>, <nikenewshop.com>, <nikeonlinemall.com>, and <nikesellings.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 22, 2016
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