WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nike, Inc. v. Azumano Travel

Case No. D2000-1598

 

1. The Parties

Complainant is Nike, Inc. (Complainant" or "Nike"), an Oregon corporation, with its principal place of business at One Bowerman Drive, Beaverton, Oregon 97140 USA.

Respondent is Azumano Travel ("Respondent" or "Azumano"), located at 320 SW Stark, Suite 600, Portland, Oregon 97204 USA.

 

2. The Domain Names and Registrar

The domain names at issue are "nikesportstravel.com" and "niketravel.com" (the "Domain Names"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.

 

3. Procedural History

On November 18, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 23, 2000, the Center received hardcopy of the Complaint. On November 24, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On November 30, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

On December 1, 2000, the Center notified Complainant of a deficiency in the Complaint. On December 12, 2000, the Center received the reply of Complainant to the deficiency.

The Center verified that the Complaint with Complainantís reply to the deficiency satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On December 12, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On January 4, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On January 16, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.

 

4. Factual Background

Complainant is the world's leading sports and fitness company. It designs, manufactures and markets a broad range of footwear, apparel and equipment. Complainant also maintains an active presence on the Internet, primarily through its "nike.com" website, where Complainant promotes and sells its goods and services, and provides information about its business activities. Complainant's "nike.com" website presently receives tens of thousands of visitors each day.

Since 1971, 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. As a result of Complainant's investment of its effort, money, skill and other resources, 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 alone, Complainant sold several billion dollars worth of NIKE brand merchandise.

Complainant owns numerous registrations worldwide for its famous NIKE trademark, including United States registrations nos. 978,952, 1,153,938, 1,243,248, 1,277,066 and 1,214,930 covering a broad range of goods and services.

Complainant is a large multinational (Fortune 200) corporation. As such, it performs, or contracts with others to perform for it, many functions necessary to support its operations. One such function is corporate travel services. Complainant employees travel worldwide in support of its business activities.

Complainant operates and/or contracts with others to operate a travel service to book flights, hotels and related amenities for its employees. On occasion, Complainant even allows its business affiliates to use Complainant's travel services to secure favorable travel arrangements in furtherance of their dealings with Complainant.

Like Complainant, Respondent Azumano Travel is based in the Portland, Oregon area. Like Complainant's travel services, Respondent is a travel agency involved in booking flights, hotels, and the like for individuals and corporate clients.

 

5. Partiesí Contentions

A. Complainant contends that it has numerous registrations for its trademark in NIKE. Complainant further contends that the Domain Names are identical with and confusingly similar to the NIKE mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent failed to contest Complainantís assertion that it has a registered mark in NIKE or that the Domain Names are identical with and confusingly similar to the mark.

Respondent failed to contest Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Names.

Respondent failed to contest Complainantís assertion that Respondent registered and used the Domain Names in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Even though Respondent has failed to file a Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Identity or Confusing Similarity

Complainant contends that it has numerous registrations in the trademark in NIKE. Complainant further contends that the Domain Names are identical with and confusingly similar to the Nike mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that its registrations in the NIKE trademark are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the NIKE mark. 15 U.S.C. ß 1115.

Respondent has not contested the assertions by Nike that it has valid registrations of the NIKE mark. Therefore, the Sole Panelist finds that, for purposes of this proceeding, Nike has enforceable rights in the NIKE mark.

Complainant further contends that the Domain Names are identical with and confusingly similar to the NIKE trademark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Nike that the Domain Names are confusingly similar to the NIKE mark.

The Sole Panelist notes that the entirety of the mark NIKE is included in each of the Domain Names. Indeed, the distinctive portion of Respondent's Domain Names, the phrase "nike," is identical to Complainant's registered NIKE trademark.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).  The addition of the phrase ".com" is non-distinctive because it is a gTLD required for registration of a domain name.

The Domain Name "nikesportstravel.com" and "niketravel.com" consist of the NIKE mark in combination with the terms, "sports" and/ or "travel". The term "sports" describes the industry in which Complainant is one of the world's best-known companies. The term "travel" describes the type of services which Complaint uses and which Respondent sells. These phrases are non-distinctive and descriptive.

In addition, the use of the entire mark together with non-distinctive and descriptive phrases is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of Respondentís services in that consumers and others are likely to believe Nike authorizes or controls the Domain Names.

Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the NIKE mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that it has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The file contains no evidence that the use of the Domain Names meet the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

Nonexclusive Criteria

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Inaction

One such factor is that Respondent has made no use of the Domain Names. Complainant alleges that Respondent has not developed any active website at "nikesportstravel.com" or at "niketravel.com" or made any other use of the Domain Names. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

In Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, ICANN Case No. D2000-0044.

See also, Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000), (citing cases where panel found inaction constitutes bad faith).

In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000), the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D00-0004 (February 16, 2000), (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business");

In the present case, the Domain Name was registered on May 14, 1999. The Domain Names have not yet been used for any legitimate purpose. The lack of any legitimate, good faith use suggests bad faith.

Actual or Constructive Knowledge

A second factor found to support a finding of bad faith is Respondentís knowledge of the Complainantís mark. Respondent registered the "nikesportstravel.com" and "niketravelcom" Domain Names on May 14, 1999, long after Nike registered the NIKE mark. Respondent had substantial constructive notice of the NIKE mark, as a trademark search on the date of the registration of the Domain Names would have revealed Nikeís registrations of the NIKE mark in the United States.

Nikeís trademark registration for the NIKE mark in the United States issued well before Respondent registered the Domain Names. Actual or constructive knowledge of the Complainantís rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000), (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith).

Failure to Respond to Requests to Transfer

A third factor is Respondentís refusal to voluntarily transfer the contested Domain Names. Complainant alleges that the following communications took place with Respondent:

∑ In May 2000, Complainant contacted Respondent by phone, placing Respondent on notice of his ongoing trademark infringement and dilution of Complainantís trademarks, and seeking transfer of Respondentís Domain Names.

∑ On May 30, 2000, Complainant confirmed this discussion by written correspondence, which included the necessary transfer forms for Respondent's completion. Complainantís letter also offered to reimburse Respondent for its out-of-pocket costs in registering the Domain Names. Respondent did not respond.

∑ Complainant then placed several phone calls to Respondent's Chief Executive Officer, none of which were returned. Complainant again wrote Respondent on August 9, 2000, and reiterated its position. Again, Respondent failed to respond.

∑ On September 21, 2000, Respondent's Chief Executive Officer assured Complainant's Vice President that he would sign and return the transfer documents the following day. As of this date, nearly two months later, Complainant has not received these documents, and has no reason to believe that they are forthcoming.

Failure to positively respond to a complainantís efforts to make contact provides "strong support for a determination of Ďbad faithí registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000).

Use of Entire Mark Without Plausible Good Faith Use

A fourth factor is the use of Complainantís entire mark in the Domain Names, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien,D2000-0028 (WIPO March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name "cellularonechina.com". The Panel inferred bad faith use of "cellularonechina.com", because the domain name included Complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ∂ 7.

Respondentís Domain Name uses the entirety of Complainantís trademark, namely the phrase "nike." No plausible explanation exists as to why Respondent selected the name NIKE as part of the Domain Names other than to trade on the goodwill of Nike. Despite contact by Nikeís counsel, Respondent has never provided any information to contradict the conclusion that Respondent registered the Domain Names in order to benefit from the well-known NIKE mark.

Conclusion

The evidence establishes: (i) inaction by Respondent in the use the Domain Names to post any content on the Internet or for any other legitimate purpose; (ii) constructive knowledge by Respondent of Complainantís rights in the NIKE mark upon the registration of the Domain Names; (iii) Respondentís failure to positively respond to Complainantís request for transfer; and (iv) the use of Complainantís entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith. Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names "nikesportstravel.com" and "niketravel.com" are confusingly similar to Complainantís registrations in the NIKE mark, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Nike, Inc. Corporation.

 


 

Richard W. Page
Sole Panelist

Dated: February 17, 2001