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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NIKE, Inc. v. Bestinfo
Case No. D2002-0543
1. The Parties
The Complainant in this proceeding is NIKE, Inc. ("Complainant"), an Oregon corporation having its principal place of business at One Bowerman Drive, Beaverton, Oregon 97005, United States of America.
The Respondent is Bestinfo, the registrant of the domain name in issue ("Respondent"), with a listed mailing address of 2183 W. Buckingham Road #324, Richardson, Texas 75081, United States of America.
2. The Domain Name and Registrar
The domain name in issue is <nikeshoes.com> ("Domain Name").
The Registrar of the Domain Name is Tucows, Inc. (the "Registrar"), with a corporate address of 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
On June 13, 2002, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") concerning the Domain Name and paid the required filing fee for appointing a single member panel.
On June 20, 2002, the Center found the Complaint to be in compliance with the formal requirements of ICANN's Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN's Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"). On the same day, the Center proceeded to send a "Notification of Complaint and Commencement of Administrative Proceeding" to the Respondent at the postal and e-mail addresses listed in the Domain Name registration. The Center received confirmation courier delivery of these documents. With respect to the e-mail transmission of these documents, the Center did not receive error messages or notices of non-delivery when the Notification and the Complaint were sent to the e-mail addresses listed in the Domain Name registration and in the Complaint.
On July 22, 2002, after the twenty-day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.
On August 2, 2002, the Panelist, as required, submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center. On the same day, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties.
On August 22, 2002 the Panelist submitted an "Administrative Panel Procedural Order No. 1" with the Center requesting further submissions from the Complainant. The Complainant submitted a "Complainant’s Response to Procedural Order No. 1" ("Complainant's Response") on August 29, 2002. On September 5, 2002, Mr. David L. Webb, the administrative, technical and billing contact for the Domain Name, submitted a "Respondent’s Response to Procedural Order No. 1" ("Respondent's Response") on behalf of the Respondent, Bestinfo. Mr. Webb and Bestinfo will hereinafter be referred to individually and collectively as the "Respondent." The Panelist notes that the responses received from each party were submitted to the Center prior to the deadlines specified by the Panelist for each party.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center’s finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist shall therefore issue a decision based on the Complaint, the Complainant’s Response, the Respondent’s Response, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based on five U.S. federal registrations for the mark NIKE, including Reg. No. 978,952 for the mark NIKE used in connection with athletic shoes with and without spikes and athletic uniforms for use with such shoes, Reg. No. 1,153,938 for the mark NIKE used in connection with all purpose sports bags, travel bags, hand bags and shoulder bags, Reg. No. 1,243,248 for the mark NIKE used in connection with retail footwear and apparel store services, Reg. No. 1,277,066 for the mark NIKE used in connection with athletic and casual clothing for men, women and children and Reg. No. 1,214,930 for the mark NIKE used in connection with footwear. Copies of the registration certificates for these marks were attached as Annex C to the Complaint.
The Domain Name was registered on October 31, 2000, to the Respondent and there is currently no web site accessible at this Domain Name. A copy of the whois record for the Domain Name was attached as Annex A to the Complaint.
5. Parties’ Contentions
The Complainant asserts that it is the world’s leading sports and fitness company and that it designs, manufactures and markets a broad range of footwear, apparel and equipment.
The Complainant asserts that since 1971, it or its predecessor, BRS, Inc., has used and promoted the NIKE trademark worldwide. The Complainant further explained that BRS, Inc., the original registrant of several of the trademark registrations relied on in the Complaint, merged with the Complainant on December 31, 1981, and assigned its rights in the respective registrations to the Complainant. The Complainant asserts that as a result of its investment of effort, money, skill and other resources, its trademark has become of one of the world’s famous trademarks. Although the Complainant manufactures and markets a wide variety of goods and services, it asserts that it is first and foremost known as a shoe company and that its shoes were the first product made by the Complainant, account for the largest portion of its business and are its most visible product among its consumers. The Complainant asserts that its NIKE trademark is exceedingly well-known and recognized worldwide as an indication of goods and services emanating from the Complainant.
The Complainant asserts that the Domain Name is highly similar to the Complainant’s mark NIKE and domain name <nike.com> because it incorporates the NIKE trademark and trade name in its entirety and an additional generic term by which the Complainant’s business is best known among consumers. The Complainant further asserts that due to the extensive similarity between the Domain Name and the Complainant’s trademark, individuals are likely to be confused and believe that the Respondent, its activities and/or web site are connected or affiliated with, sponsored or endorsed by, or emanate from the Complainant. The Complainant therefore asserts that the Domain Name is confusingly similar to its famous NIKE trademark.
The Complainant asserts that the Respondent has no legitimate interests in the Domain Name. The Complainant further asserts that the Respondent has no relationship with Complainant, has never used any trademark or service mark similar thereto by which it may have come to be known and has not made non-commercial or commercial use of the Domain Name. The Complainant also asserts that its trademark is recognized worldwide, and that the Complainant has been careful to prevent conflicting uses from emerging. As a result, the Complainant asserts, few if any individuals worldwide have any legitimate interest in any commercial designation containing the NIKE trademark. Rather the Complainant asserts that the Respondent is but one of many "cybersquatters" seeking to profit from the Complainant's world famous trademark.
The Complainant asserts that on April 4, 2001, it sent a letter to the Respondent, placing the Respondent on notice of his ongoing trademark infringement and dilution of the Complainant’s trademarks, seeking transfer of the Domain Name and offering to reimburse the Respondent for out-of-pocket expenses incurred during the registration of the Domain Name (a copy of this letter was attached as Annex D). The Complainant asserts that it did not receive a response to this letter.
The Complainant asserts that the Respondent registered and is using the Domain Name in bad faith, since at the time of registration he knew of the fame and the Complainant's ownership of the NIKE trademark, that the Respondent "could readily foresee that people would assume the <nikeshoes.com> domain name to be connected with complainant, that the public would seek out this site in the hope of finding complainant's site and that complainant would therefore wish to own and use it." The Complainant further asserts that the "Respondent's use and registration of nikeshoes.com has prevented Complainant from using its own world-famous trademark in this domain name" and that this conduct constitutes bad faith registration and use of the Domain Name under controlling law and precedent.
The Complainant also asserts that the Respondent does not appear to have made any use of the Domain Name and has not associated a web site at the Domain Name after nearly two years of ownership. In addition, the Complainant asserts that the Respondent has demonstrated a pattern of registering domain names containing the famous trademarks of third parties by registering domain names such as <sonyvcr.com> and <sonycam.com> and provided the whois records for these domain names listing the Respondent as the registrant. Based upon the above, the Complainant asserts that the Respondent’s passive use in conjunction with its pattern of registering domain names including the famous trademarks of third parties constitutes bad faith use under the Policy and that the Respondent has made bad faith use of the Domain Name.
No response was received from the Respondent with respect to the Complaint. However, the Respondent did submit the Respondent's Response in response to the Panelist’s Procedural Order No. 1. In the Respondent's Response, the Respondent admitted that he has "never to date [sic] this date had a website of any kind, although not to imply that a website is not being developed." The Respondent further asserted that he envisioned obtaining a license to sell Nike products and that a friend of the Respondent has been trying to secure a license to sell the products. The Respondent also asserted that he was approached by some "Humanitarians" and activists who wanted the Respondent to put up a web site at the Domain Name for people to post their stories about the exploitation and mistreatment of third-world workers who make Nike shoes. The Respondent asserted that he is not passively holding the Domain Name but rather is "thinking all the time about the best course of action." The Respondent also asserted that it "does not have the resources like Nike to fund a quick solution [sic] a commercial website."
The Respondent asserts that he has not acted in bad faith in registering the Domain Name. The Respondent asserts that the Complainant has acquired through WIPO numerous domain names which have no active web site and have not been redirected to a Nike web site since the Complainant acquired them. In addition, the Respondent asserts that a Swiss manufacturing company has held the Nike trademark 14 years longer than the Complainant and attached a copy of the corresponding trademark information for the mark NIKE as evidence.
The Respondent further asserts that the Respondent at one time registered the domain names <sonyvcr.com> and <sonycam.com> and through a partner had sought to acquire a Sony dealership, but that the Respondent did not renew these domain names. The Respondent also asserts that he has never offered the domain name <nikeshoes.com> for sale or returned any emails to anyone inquiring about wanting to buy this Domain Name.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holder’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
A panelist, however, can only rule in a complainant’s favor only after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
Under the Policy, the Panelist must determined if the Domain Name in the present proceeding is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided sufficient trademark documentation and explanation of ownership of five U.S. federal registrations for the mark NIKE. The Panelist therefore finds that the Complainant has provided sufficient evidence to show the Complainant’s ownership and rights in the mark NIKE. A review of the second-level domain "nikeshoes" of the Domain Name shows that the domain comprises the Complainant’s mark NIKE as a prefix and the word "shoes" that is descriptive of the goods for which the mark is registered or can easily be viewed as being associated therewith. The fact that there is another company having ownership in a U.S. federal registration for the trademark NIKE used in connection with mechanical and hydraulic lifting jacks, hydraulic pistons, hydraulic presses, hand-driven and motor-driven high pressure pumps, has no bearing on the present proceeding. The Panelist therefore finds that the Domain Name is confusingly similar to the Complainant’s mark NIKE and that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
Looking to paragraph 4(c) of the Policy, no evidence has been presented that the Respondent, before notice of this dispute, was using or making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or making any legitimate noncommercial or fair use of the Domain Name. As acknowledged by the Respondent, there has not been or is there currently a web site accessible at the Domain Name. Although the Respondent claims to have plans to offer the Complainant’s products or to post an opinion forum about the Complainant’s products at the web site located at the Domain Name, he has produced no demonstrable evidence to support these assertions. Nor has any evidence been presented that the Respondent is commonly known, as an individual, business or otherwise, by the Domain Name. The Panelist therefore finds that the Respondent has not shown any rights or legitimate interests in the Domain Name. Element (ii) has therefore been satisfied.
Element (iii) - Domain Name Registered and Used in Bad Faith
The Panelist finds that the Respondent was well aware of the Complainant’s mark NIKE and its rights therein at the time the Respondent registered the Domain Name. This finding is supported by the NIKE mark being well known and having a strong reputation along with the above findings that the Domain Name is confusingly similar to the Complainant's mark NIKE and that the Respondent has no rights or legitimate interests in the Domain Name. Furthermore, this finding is supported by the Respondent's acknowledgment that he registered the Domain Name having "envisioned obtaining a license to sell Nike products."
The Complainant has also asserted that the Respondent has never associated the Domain Name with any web site and that he is passively holding the Domain Name. The Respondent confirms this assertion by indicating that he has made no use of the Domain Name since registering it on October 31, 2000. The Complainant further submitted evidence showing that the Respondent registered other domain names, namely <sonyvcr.com> and <sonycam.com>, and has engaged in similar passive holding with respect to these domain names. The Respondent confirmed his registrations of the domain names <sonyvcr.com> and <sonycam.com> as well as the Domain Name as part of a plan to sell the respective mark owner’s products. Such asserted planned use of these domain names would thus allow the Respondent to derive profits from the goodwill associated with the Complainant’s and other mark owner’s marks and from the resulting confusion as to the ownership, association or authorization of these domain names. Therefore, there is sufficient evidence to show that the Respondent has engaged in a pattern of registering domain names incorporating the well-known marks of other parties for apparent commercial gain. The fact that the Respondent did not renew the registrations for the domain names <sonyvcr.com> and <sonycam.com> does not somehow absolve his conduct of registering domain names incorporating the trademarks of other parties.
When viewing the assertions and the evidence submitted in their entirety, the Panelist finds that the Respondent’s passive holding of the Domain Name coupled with the Respondent’s registration of other domain names incorporating the marks of others for apparent commercial gain supports a finding of bad faith registration and use of the Domain Name. Accordingly, the Panelist finds that the Respondent registered and is using the Domain Name in bad faith and concludes that Element (iii) has been satisfied.
The Panelist concludes: (i) that the Domain Name is confusingly similar to the Complainant’s mark; (ii) that the Respondent has no rights or legitimate interests in the Domain Name; and (iii) that the Respondent has registered and is using the Domain Name in bad faith. Accordingly, the Panelist requires that the registration of the domain name <nikeshoes.com> be transferred to the Complainant.
Dated: September 8, 2002