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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike, Inc. v. B. B. de Boer
Case No. D2000-1397
1. The Parties
Complainant is Nike, Inc., One Bowerman Drive, Beaverton, OR 97005 (U.S.A).
Respondent is B. B. de Boer, Jaspisdreef 20, Emmen, DR 7828 CG (The Netherlands).
2. The Domain Name and Registrar
The domain name at issue is "nike-shoes.com" [hereinafter referred to as the Domain Name].
The registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, 20170 (U.S.A.) [hereinafter referred to as the Registrar].
3. Procedural History
On October 16, 2000 Complainant filed a complaint with the WIPO Arbitration and Mediation Center [hereinafter referred to as the Center]. The Complaint was received by email on October 16, 2000 and in hardcopy on October 18, 2000.
On October 19, 2000, Acknowledgement of Receipt by the Center was sent to the Complainant.
On October 19, 2000, the Center informed the Registrar that the Complaint had been submitted to the Center regarding the Domain Name.
On October 29, 2000, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current registrar of the Domain Name registration;
- the Respondent is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Policy] applies to the Domain Name.
The Center proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules] and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on October 31, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On October 31, 2000 the Center informed the Respondent of the commencement of the proceedings as of October 24, 2000 and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on November 19, 2000.
In a letter dated November 27, the Center informed the Respondent that he was in default pursuant to the ICANN Policy and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On December 6, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or Prior to December 19, 2000, in the English language.
4. Factual Background
The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint.
Complainant is a well-known company that designs manufactures and markets a broad range of sports and fitness wares. Since 1971, Complainant has used and promoted its NIKE trademark worldwide in connection with footwear, apparel, equipment, electronics and retail store as well as web-related services. Complainant has also registered and uses the domain name <nike.com> in the same manner.
Complainant owns numerous trademark registrations worldwide for its NIKE trademark, including United States registrations n° [978,952], [1,153,938], [1,243,248], [1,277,066] and [1,214,930] covering a broad range of goods and services.
On March 11, 2000, Respondent registered the Domain Name <nike-shoes.com>.
5. Parties’ Contentions
Regarding apparent confusing similarity between the Domain Name registered by the Respondent and the trademark owned by the Complainant, the Complainant points out that its distinctive and world-famous trademark is part of the Domain Name. Complainant also suggests that there is a great likelihood of confusion between the Domain Name and Complainant's trademark and that individuals are likely to use the Domain Name to seek out the Complainant's web site.
With respect to Respondent's absence of right or legitimate interest in the Domain Name, Complainant argues that Respondent is not one of Complainant’s numerous contractually authorized resellers, and that it has no relationship with Complainant. It adds that even if Respondent was entitled to re-sell Complainant’s products, Respondent's use of Complainant's trademark in the Domain Name would inaccurately imply that it is affiliated or connected with, or sponsored or endorsed by Complainant.
Complainant also alleges that Respondent does not appear to have ever been known by the Domain Name or to have ever used a trademark or service mark similar thereto. Furthermore, it contends that it would be unlikely that any individuals worldwide have a right or a legitimate interest in any commercial designation containing Complainant's "NIKE" trademark, given the tremendous efforts and amount of resources that it invests to prevent conflicting uses from emerging and given that Complainant's trademark is famous to the point where it may not be used by other persons in unrelated fields or industries.
As for the allegations purporting to show bad faith in the registration and use of the Domain Name by the Respondent, Complainant asserts that at the time of registration, the Respondent knew of the fame and Complainant's ownership of its trademark. Complainant also suggests that Respondent knew that Complainant would wish to own and use the Domain Name, since consumers were likely to use it to find the Complainant's web site.
Complainant also mentions that in a letter dated September 1, 2000, it asked Respondent to transfer the Domain Name in exchange for Respondent's out-of-pocket costs in registering the domain name. Complainant alleges that Respondent responded by asserting his right to keep the domain name unless Complainant purchased it from him for a higher price.
Finally, Complainant argues that Respondent's use and registration of <nike-shoes.com> has prevented Complainant from using its own world-famous trademark in this domain name.
As previously stated, Respondent has not filed a response to the current proceedings, and is in default to do so. Pursuant to section 5(e) and 14 of ICANN Rules, the Panel shall decide the dispute based upon the complaint.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name;
iii) that the Domain Name was registered and used in bad faith.
A. Confusing Similarity between the Domain Name and Complainant's trademark
The Panel considers that the trademark registrations submitted by the Complainant suffice to establish Complainant's rights in the trademark "NIKE".
The Panel also considers that the Domain Name <nike-shoes.com> is confusingly similar to Complainant's trademark, specially given that:
(i) the word "Nike" in itself is strongly distinctive;
(ii) Complainant's trademark is included in the Domain Name;
(iii) the Complainant has been using its trademark in association with footwear.
Therefore, the Panel finds that Complainant has shown that the Domain Name is identical or confusingly similar to a trademark in which it holds rights.
B. Right or Legitimate Interest in the Domain Name by Respondent
While the ICANN Policy provides circumstances under which a Respondent can demonstrate a right or a legitimate interest in the Domain Name, it doesn't suffice for a Complainant to show that none of those situations can be invoked by a Respondent. Complainant must show why it is more likely than not that the Respondent has no right or legitimate interest in the Domain Name.
In the present case, Complainant already alleged that it has not granted any permission of any kind to Respondent to use its trademark and that it has no relationship with Respondent.
In addition, given that Complainant's trademark is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to Complainant's activities, one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant's trademark.
The Panel is unable to find how the Respondent, or any person for that matter beside the Complainant, could claim a right or a legitimate interest with respect to the Domain Name <nike-shoes.com>.
As it was previously mentioned, Respondent has not provided the Panel with a response to the Complaint, hence Complainant's contentions regarding the Respondent's absence of right or legitimate interest in the Domain Name remain unchallenged.
C. Bad faith in Registration and Use of the Domain Name by the Respondent
Without being conclusive, the mere fact that the Complainant has been involved in a few previous domain name disputes (See WIPO Cases D2000-0108, D2000-0167, D2000-1120), is a strong indication that its trademarks are being targeted by cybersquatters for speculation purpose. The Panel is of the opinion that this case is no exception.
Section 2 of the ICANN Policy provides that, when someone registers a domain name, he represents and warrants to the registrar, notably, that, to his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. The same section also provides that it is incumbent on the person who registers the domain name to determine whether the domain name registration infringes or violates someone else's rights.
In the present case, the Panel finds that, since Complainant's trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant's trademark rights. The Panel therefore concludes that the Respondent has registered the Domain Name in bad faith.
With respect to the last element that Complainant has to prove, the use of the Domain Name in bad faith, the Complainant offered tangible proof of the notice it wrote to the Respondent on September 1, 2000. However, it has not provided the Panel with proof that it actually sent the notice or that the notice was received by the Respondent, or that Respondent's answer to the notice was actually what the Complainant is reporting in its Complaint.
But since the Panel considers that it is more likely than not that Respondent was notified and did answer that it would only transfer the Domain Name if the Complainant was willing to offer more than what Respondent spent to register it, and since the Respondent was given the opportunity to deny this allegation and has not done so, the Panel finds that Respondent acted in bad faith with respect to the use of the Domain Name.
The Panel further determines that Respondent's failure to use the domain name also supports a finding of bad faith use under the Policy. (See Telstra Corp., Ltd. v. Nuclear Marshmallows., Case N° D2000-0003.)
For the foregoing reasons, the Panel concludes that:
- the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the Domain Name;
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nike-shoes.com> be transferred to the Complainant.
Hugues G. Richard
Dated: December 21, 2000