WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NIKE, Inc. v. Jaeik Jung

Case No. D2000-1471

 

1. The Parties

The Complainant: NIKE, Inc., One Bowerman Drive, Beaverton, OR 97005, United States of America.

The Respondent: Jaeik Jung, 517-37 Silim-4dong, Kwanak-ku, Seoul, 151-014, Korea. Administrative, zone, and technical contact for the domain name: Jaeik Jung, as above.

 

2. The Domain Names and Registrar

The domain names in issue are <nikeeurope.com>, <nike-europe.com>, <nikeurope.com>, and <euronike.com> (hereafter "the domain names" or "the Respondentís domain names").

The registrar of the domain names is Register.com, Inc., 575 8th Avenue, 11th Floor, New York, NY 10018, United States of America.

The domain names were registered on August 7, 1999.

 

3. Procedural History

(1) The Complaint in Case D2000-1471 was filed on October 28, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint identified the registrar of the domain names, and indicated that a copy had been forwarded to the registrar, but the registrar indicated that it had not received a copy. The Center did not issue a deficiency notice in respect of this requirement, on the basis of the Complainantís assertions. I conclude that there was no deficiency in the formal requirements of the Complaint;

- A Response to the Complaint was filed; and that

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(5) The date scheduled for issuance of a decision is: January 4, 2001.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The language of the proceedings is English.

 

4. Factual Background

The Complainant, NIKE, Inc, is an internationally-known sports and fitness company. It designs, manufactures and markets a broad range of footwear, apparel and equipment. It 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's nike.com web site presently receives tens of thousands of hits each day.

Since 1971 the Complainant 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. The Complainant's "NIKE" trademark is widely recognized as indicating goods and services emanating from Complainant, and has become one of the world's most famous trademarks. Last year, the Complainant sold several billion dollars worth of "NIKE" brand merchandise. The Complainant has numerous trademark registrations for its "NIKE" trademark, including United States registrations nos. 978,952, 1,153,938, 1,243,248, 1,277,066 and 1,214,930, covering a range of goods and services in multiple classes (hereafter "the Complainantís trade marks").

The Complainant has an active presence in Europe. The Complainant's products are sold throughout Europe, and the Complainant operates retail stores in Europe, including two large and highly prominent "NIKE TOWN" retail stores in London and Berlin.

According to his Response, the Respondent is an "international domain trader" with 290 domain name registrations, including the domain names in issue here.

 

5. Partiesí Contentions

The Complainant asserts:

- The Respondent's domain names are confusingly similar to the Complainant's "NIKE" trade marks. Due to the extensive similarity between the domain names and the Complainantís marks, individuals confronting the Respondent's domain names are likely to be confused, and to believe that the Respondent, his activities and/or web sites are connected or affiliated with, sponsored or endorsed by, or emanate from Complainant.

- The Respondent has no rights or legitimate interest in the domain names. It does not appear that Respondent has ever been commonly known by this designation. The Respondent has never used any trademark or service mark by which it may have come to be known. The Respondent has not made use of the domain names in connection with any business. The Respondent is not making non-commercial use of the domain names.

- The Respondent registered and is using the domain names in bad faith, as evidenced by (1) the fact that he knew at the time of the fame and Complainantís ownership of its "NIKE" trademark and service mark, and (2) that he offered to transfer the domain names to the Complainant if the Complainant would in return give the Respondent a job in its employ.

- And that accordingly the Panel should order that the domain names be transferred to the Complainant.

The Respondent asserts:

- That he intended to resell these domain names to international business persons who would be free from trademark infringement of the Complainantís brand.

- That he has not established any website and thus has not confused any internet users.

- That he has no intention of reselling domain names to the Complainant by asking them for a high price for the names.

- That he spoke with a representative of the Complainant, offering to transfer (without hesitation) the domain names to the Complainant for documented costs, but that the Complainant refused to specify these costs and therefore the offer was rejected.

 

6. Discussion and Findings

Paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy ("the UDRP") requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

Dealing then with each element in turn:

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

The Complainant is an internationally famous company, and has extensive international trade mark registrations and goodwill associated with the brand "NIKE". This background information aside, the Complainant has established that it has registered the United States trade marks detailed in Section 4 above. The ownership of these marks is not disputed, and therefore this Panel holds that first requirement of paragraph 4.a.(i) is made out. The Complainant clearly has rights in trade marks sufficient to ground this action.

The second requirement of this paragraph is that the domain names in issue are identical or confusingly similar to the Complainantís marks. On this issue, the Complainant asserts that the four domain names are confusingly similar to its marks. The Complainant notes that it has extensive business interests in Europe, and on the basis of the extensive similarity between the domain names and the Complainantís marks, individuals confronting the Respondent's domain names are likely to be confused, and to believe that the Respondent, his activities and/or web sites are connected or affiliated with, sponsored or endorsed by, or emanate from Complainant.

I conclude that this is clearly the case. All of the additions to the trade marked word are for the geographical suffix or prefix "europe" or its close variant ("euro"). Geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g. Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-Mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc. v Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Jefferson Smurfit Group, plc. v. Stephen Davidson, Inc., WIPO Case No. D2000-1117; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118). I am happy to follow the line of reasoning established in these decisions.

The Respondent argues that no users could be confused because it has not yet established a website or delegated the domain names. This is no defence to this part of the Complaint: the domain names are still registered and may be perused on the WHOIS database. And the users seeking to go to the Complainantís European operation are likely to be confused by the fact that the obvious domain names (<nikeeurope.com>, <nike-europe.com>, <nikeurope.com>, and <euronike.com>) are registered but do not take the user to a NIKE website. I reject the Respondentís argument on this point. The domain names are confusingly similar to the Complainantís trade marks.

I conclude therefore that the Complainant has satisfied paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interests in respect of the domain name.

In this element the Respondent must establish rights or a legitimate interest in the domain name in issue. The Respondent has utterly failed to indicate any grounds by which he might colourably argue that he has rights or a legitimate interest. It does not appear that Respondent has ever been commonly known by any designation similar to the domain names in issue. The Respondent does not plead that he used any trade mark or service mark that is related to the domain names. The Respondent has not made use of the domain names in connection with any business. The Respondent is not making non-commercial use of the domain names.

The Respondent claims that he intended to resell the domain names to "international business persons" who would be free from trade mark infringement of the Complainantís brand. But even in the extremely unlikely event that such "international business persons" could be found to exist, this would mean only that these people might be able to establish rights or a legitimate interest in the domain names. It does not demonstrate rights or a legitimate interest for the Respondent.

I conclude that the Complainant has satisfied paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

On the initial question of whether there was bad faith registration, the domain names were registered on August 7, 2000. The Complainantís trade marks have been used since 1971, and millions (if not billions) of dollars have been spent establishing the brand. It is one of the most recognizable brands on the planet. Unless the Respondent can establish that it has some legitimate interest in the names, it beggars belief that the registrations of the domain names could have been in good faith. The Respondent has provided no evidence rebutting the Complainantís assertions, and I therefore conclude that the registration was in bad faith.

There is also clear evidence of ongoing bad faith use. The Complainant provides evidence that the Respondent offered to transfer the domain names for the consideration of employment with the Complainant. The Respondent suggests that this is not so, and instead suggests that he offered to transfer the names to the Complainant for its out-of-pocket costs. The Respondent claims the Complainant refused this offer, and claims that the Complainant did not want to accept his "reasonable" request that the transfer occur via an escrow agent to make the transaction open and transparent. This assertion is ludicrous: if the Complainant were genuinely offered the transfer of the domain names for minimal cost, why would it go through the expense and delay of this UDRP administrative proceeding? Either the Respondent is lying or the additional terms imposed by the Respondent took it outside the realms of "reasonable out-of-pocket expenses". In either event, the Respondentís argument against the allegation of bad faith use simply does not stand up.

I conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has satisfied all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain names <nikeeurope.com>, <nike-europe.com>, <nikeurope.com>, and <euronike.com> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: December 30, 2000