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WIPO Domain Name Decision: D2000-1707
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike, Inc. v. Paul Verschoor
Case No. D2000-1707
1. The Parties
The Complainant in this administrative proceeding is NIKE, Inc., an Oregon corporation with its principal place of business in Beaverton, Oregon, USA.
According to Network Solutions, Inc.’s Whois database, the Respondent is Paul Verschoor, whose address is listed as Sluisstraat, Amsterdam, The Netherlands.
2. The Domain Names and Registrar
This dispute concerns the domain names identified below:
The Respondent registered the domain names on June 11, 2000.
The Registrar with whom the domain names are registered is:
Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which were approved by ICANN on October 24, 1999, was received by WIPO in electronic format on December 7, 2000 and hardcopy on
December 12, 2000. Payment in the required amount to the Center has been made by the Complainant.
On December 11, 2000, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.
On December 14, 2000, WIPO requested from the Complainant an amendment to the Complaint. The amendment was received by WIPO in hard copy on December 27, 2000 and by e-mail on January 5, 2001.
On January 5, 2001, there was notification of the Complaint and commencement of the administration proceeding.
On January 25, 2001 WIPO notified the Respondent that he had failed to comply with the deadline indicated in the notification of Complaint by not filing a submission in response.
On February 15, 2001, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request for a single-member panel, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Mr. Clive Elliott, and advised that the decision should be forwarded to WIPO by March 1, 2001.
On March 2, 2001 there was still no response from the Respondent and the decision was made.
4. Factual Background
The Respondent's domain names contain the word "nike", which is identical to the Complainant's registered "NIKE" trademark. Each name then combines the Complainant's "NIKE" trademark with "soccer" and the designation .com, .net or .org.
The Complainant owns numerous trademark registrations worldwide for its "NIKE" trademark, including United States registration nos. 978,952, 1,153,938, 1,243,248, 1,277,066 and 1,214,930 covering a broad range of goods and services.
On October 16, 2000, the Complainant sent a letter to Respondent placing the Respondent on notice of his alleged trademark infringement and dilution of Complainant's trademark, and seeking transfer of the Respondent's domain names. The Complainant's letter also offered to reimburse the Respondent for his out-of-pocket costs in registering these domain names.
The Respondent responded by offering to sell the domain names to the Complainant for $5,000 (USD) each - $15,000 total. The Complainant declined this offer in a telephone conversation on November 9, 2000. The Respondent then offered to sell the three domain names to the Complainant for $500 (USD) each. The Complainant again refused. The Respondent thereafter declined to transfer the domain names at issue.
5. Parties’ Contentions
A. The Complainant alleges the following:
The Complainant claims that NIKE is the world's leading sports and fitness company. It designs, manufactures and markets a broad range of footwear, apparel and equipment. The Complainant also maintains an active presence on the Internet, primarily through its <nike.com> web site, where the Complainant promotes and sells its goods and services, and provides information about its business activities. The Complainant says that the <nike.com> web site presently receives tens of thousands of visitors each day.
The Complainant says that since 1971 it has used and promoted its "NIKE" trademark worldwide in connection with footwear, apparel, equipment and retail store services, web-based communication and informational services and other related services. As a result of the Complainant's investment of its effort, money, skill and other resources, the Complainant's "NIKE" trademark is widely recognized as indicating goods and services emanating from the Complainant, and has become one of the world's most famous trademarks. Last year the Complainant claims to have sold several billion dollars worth of "NIKE" brand merchandise.
The Complainant alleges it has an active and rapidly growing presence in worldwide soccer and related products. The Complainant manufactures and sells a full range of "NIKE" brand soccer shoes, soccer uniforms, soccer balls, soccer gloves and pads, and other soccer products. The Complainant says that last year alone it sold over $100 million of its "NIKE" brand soccer products worldwide. The Complainant claims that their "NIKE" soccer products are endorsed by world-renowned soccer stars like Ronaldo, Mia Hamm, Edgar Davids, Nakata and Brandi Chastain. The Complainant says that it also sponsors world-renowned soccer teams like the national soccer teams of Brazil, Portugal and the United States, as well as more localized professional soccer clubs like Arsenal, Leeds, Sunderland, Barcelona, Inter Milan, and the Glasgow Rangers in Europe and the New York Metro Stars, Chicago Fire, Los Angeles Galaxy and San Jose Earthquake in the U.S.
Due to the similarity between its trademark and the domain names the Complainant believes that consumers are likely to go to the Respondent's web sites to seek out the Complainant and the Complainant's popular "NIKE" soccer products.
The Complainant states that in the Respondent's October 26, 2000 correspondence (offering to sell these names to the Complainant), the Respondent claimed that he originally intended to use these names in connection with web sites providing information on "Ancient Mythology." The Complainant's "NIKE" trademark is also the name of the Greek mythological goddess of victory. However, the Complainant notes that "soccer" has nothing whatsoever to do with "Ancient Mythology."
The Complainant claims that the Respondent has not made use of the domain names in connection with any business and the Respondent is not making non-commercial use of the domain names either.
No response was received from the Respondent.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) The domain names are identical or confusingly similar to the trade mark;
(ii) The Respondent has no right or legitimate interest in respect of the domain names; and,
(iii) The domain names have been registered and are being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domain Names Identical or Confusingly Similar
The Complainant alleges, with some basis, that NIKE is a trade mark recognized as one of the world’s leading sports and fitness brands. The Complainant also alleges that it has an actively growing presence in worldwide soccer and related sports areas. It refers specifically to certain national and other soccer teams that it currently sponsors.
Given the widespread recognition of the NIKE trade mark and its association with soccer, the addition of the word "soccer" to Nike does little to break the obvious connection between the domain name and the Complainant company.
In the panel’s view, the addition of a descriptive term to a famous trade mark does little to alter the inherent trade mark nature of the term Nike. Accordingly, it is found that Nike, a word in which the Complainant has clear trade mark rights, is not identical to but extremely similar to nike-soccer. By the same token, it is found that nike-soccer is confusingly similar to NIKE, particularly given the Complainant’s close association with sport generally and soccer specifically. Accordingly the first ground is made out.
No Rights or Legitimate Interests
While the Respondent has not filed a response, it is clear from correspondence sent by the Respondent that his explanation for choosing nike-soccer was that he had his own prior plans for the extensive use of the domain name for information on ancient mythology, but that this plan had fallen through. While Nike may have been the name of an ancient Greek god, today, in relation to sport and sports clothing and equipment, the unavoidable connection is with the Complainant company, rather than the Greek god.
With respect, the Respondent’s explanation for choosing "nike-soccer" seems to be somewhat transparent, particularly when seen in light of his offer to sell it back to the Complainant, at a price higher than the Respondent’s likely out-of-pocket expenses. Further, his claim is cast in some doubt when he indicated to the Complainant that if they were not prepared to purchase the domain names offered, he would put them on the open market.
In the absence of any denial, other than that the possible explanations contained in the correspondence, it is hard to find any legitimate basis for registering the domain names, as the Respondent has.
Accordingly, this ground is also made out.
Registration and Use in Bad Faith
It is clear from the correspondence that the Respondent offered to sell the domain names to the Complainant for US$5000.00 each. The Respondent indicated that this was a reasonable estimate of his costs. However, no indication was given as to where these costs had been incurred or why they were at that level. It is found that the amount offered was in excess of the out of pocket expenses of the Respondent, particularly absent any real explanation as to where these costs had been incurred.
As for the statement that if Nike Inc. did not purchase the domain names, he would sell them to a party of his choice, the inference can be drawn that this was meant as a threat or at least as an inducement to Nike Inc. to purchase the domain names.
In the panel’s view this conduct amounts to or evidences use of the domain names in bad faith. Further, there is no reliable evidence that the domain names were registered in good faith. Indeed, given the Respondent’s silence the inference has to be drawn that the opposite applies.
Accordingly, this ground has been made out.
In view of the above the domain names should be transferred to the Complainant.
Dated: March 2, 2001