WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike, Inc. v. Crystal International
Case No. D2001-0102
1. The Parties
The parties are Nike, Inc. of One Bowerman Drive, Beaverton, Oregon 97005, USA (Complainant) and Crystal International of Lotte APT 7-1105, Jung-Gae-2-Dong Nowon-Gu, Seoul 139-222 Korea and/or of RM609 HyoChunB/D, SeoChoDong, 1425-10 SeoChoKu, Seoul, 137-070 Korea (Respondent).
2. The Domain Names and Registrars
The domain names in dispute are <nikewomen.com>, <nikeshop.net>, <nikeshop.org>, <nike-shop.com>, <nike-shop.net> and <inike.net> ("the Domain Names"). Network Solutions, Inc. ("NSI") is the registrar of <nikewomen.com>, <nikeshop.org> and <inike.net>. Tucows, Inc ("Tucows") is the registrar of <nikeshop.net>, <nike-shop.com> and <nike-shop.net>.
3. Procedural History
The complaint was filed by the Complainantís Assistant General Counsel with the WIPO Arbitration and Mediation Center ("the Center") in hard copy on
January 18, 2001 and by email on January 19, 2001. The complaint incorrectly identified NSI as the registrar of all of the Domain Names and contained a submission to the jurisdiction of the courts of Virginia, USA (in which the principal office of NSI is located). By email of January 25, 2001, NSI verified that it was the registrar of <nikewomen.com>, <nikeshop.org> and <inike.net>, that its Service Agreement incorporating the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to these domain names, and that it had received a copy of the complaint. NSI pointed out that the other domain names in dispute had been transferred to Tucows.
An amendment to the complaint to identify Tucows as the registrar of these domain names was filed with the Center by email on February 1, 2001 and in hard copy on February 2, 2001. The amendment also revised the submission to jurisdiction to refer to the courts of Korea. By email of February 1, 2001, Tucows verified that it was the registrar of nikeshop.net, nike-shop.com and nike-shop.net and that the Policy applies to these domain names in accordance with its Registration Agreement. Tucows stated in this email that it had not received a copy of the complaint, but indicated that the domain names were on hold to ensure no changes of ownership or Registrar for the duration of the dispute.
The complaint authorized payment of the correct amount of fee from the Complainantís account held with WIPO and the Centerís formal requirements compliance checklist records that the correct fee has been duly paid. On a review of the file, the Panel concludes that the complaint complied with the applicable formal requirements, except that it was not sent by the Complainant to Tucows in accordance with paragraph 4(b) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the WIPO Supplemental Rules"). Since this omission has not prejudiced the Respondent the Panel has decided to disregard it.
The complaint was sent to the Respondent on February 2, 2001 (a) by email to postmaster @ each of the Domain Names; (b) by email to firstname.lastname@example.org email@example.com and firstname.lastname@example.org (the addresses indicated for the administrative and billing contacts for the various Domain Names in the NSI and Tucows whois databases); by email to email@example.com (the address indicated for the technical contact in the NSI whois database); (c) by fax to +82-2-977-5604 (the fax number indicated for the Respondent in the NSI whois database); (d) by courier to the two postal addresses of the Respondent set out above (the addresses indicated for the Respondent in the NSI and Tucows whois databases respectively). The Panel concludes that the complaint was properly notified in accordance with paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
The Respondent did not submit a response within the time required by the Rules and on February 26, 2001 the Center gave notification of default by email to the above email addresses for the administrative and billing contacts. The single member Panel, Jonathan Turner, submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on March 8, 2001. In accordance with paragraph 15 of the Rules, the Panel was required to forward its decision to the Center by March 22, 2001 in the absence of exceptional circumstances. On March 11, 2001 the Respondent sent the Center an email whose content is summarised in section 5 of this Decision. The Center replied to the Respondent stating that its email would be forwarded to the Panel which would have sole discretion to decide whether to accept and/or consider this email in deciding the case.
4. Factual Background
The Complainant is very well known throughout the world as a leading supplier of sports footwear, clothing and equipment under its name "Nike". Its activities include the operation of retail outlets under the names "Nike Town" and "Nike Shop". It has registered "Nike" as a trade mark in the US and no doubt in many other countries, although the Complaint does not include details of registrations in countries other than the US.
The Respondent registered the Domain Names at various dates between
November 22, 1998 and July 17, 1999. It does not currently have any websites at present at any of these addresses.
5. Partiesí Contentions
The Complainant contends that the Domain Names are similar to its well-known Nike brand in which it has trade mark rights, that the Respondent has no discernible legitimate interest in using the Domain Names, and that they were registered and are being used in bad faith and to prevent the Complainant from using them.
As noted above, the Respondent did not submit a response within the time required by the rules. In a subsequent email the Respondent stated that it intended to use certain of the Domain Names for a Nike shopping mall website and that it did not understand why this should be unlawful.
6. Discussion and Findings
The Panel has to decide first whether it should take the Respondentís email of March 11, 2001 into consideration, even though it was sent after the end of the period for filing the response. Paragraph 5(d) of the Rules provides that "at the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response". The general power of the Panel to extend time limits in paragraph 10(c) of the Rules is likewise exercisable only in "exceptional cases".
The Panel considers that this is not an exceptional case. In particular, there is no reason to believe that the Respondent did not have a fair opportunity to file its response within the time limit. Furthermore, the email does not comply with the requirement of certification of the response specified in paragraph 5(b)(viii) of the Rules.
The Panel also has power under paragraph 12 of the Rules to request further statements or documents from the parties at its sole discretion. However, the Panel considers that this provision should not be stretched in order to circumvent the restrictions on extending time limits provided in paragraphs 5(d) and 10(c) of the Rules.
The Panel is conscious of the possible arguments in favour of considering the email that it would not in fact prejudice the Complainant or affect the outcome of this case. However, to take the email into account on the basis of such arguments could set a precedent which would be contrary to the wording of the Rules and the objective of providing an efficient and expeditious procedure for the resolution of domain name disputes. The Panel has accordingly decided not to take the Respondentís email of March 11, 2001 into consideration.
In accordance with paragraph 4 of the Policy, a complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
As to the first requirement, the Panel considers that each of the Domain Names is confusingly similar to "Nike" and "Nike Shop". The Panel is also satisfied that Complainant has registered trade mark rights in "Nike" and unregistered trade mark rights in "Nike" and "Nike Shop". The Complainant has given details of some of its registered trade marks for "Nike" in the US but not in other countries. However, in the absence of any indication that the Domain Names would be used in relation to activities confined to a particular country or countries, the Panel considers that it is appropriate to take into account the Complainantís rights in any country, including the US. Furthermore, the Panel is satisfied that the worldwide goodwill and reputation of the Nike brand is such that the Complainant has unregistered trade mark rights in Korea where the Respondent is based.
As to the second requirement, the Panel is satisfied that the Respondent has no legitimate interest in using the names. In particular, the Respondent does not appear to have used or made any preparations to use any of the Domain Names in connection with any bona fide offering of goods or services prior to the dispute in accordance with paragraph 4(c)(i) of the Policy.
As to the third requirement, the Panel considers that bad faith is indicated by the registration of a series of domain names which are confusingly similar to a famous brand name followed by the absence of any legitimate use of them for over two years since the first was registered. The Panel is satisfied that the Domain Names were in fact registered in order to prevent the Complainant from reflecting "Nike" and "Nike Shop" in corresponding domain names. The Panel considers that the registration of a series of six such names is sufficient to constitute a pattern of such conduct within the meaning of paragraph 4(b)(ii) of the Policy. The Panel is also satisfied that the Domain Names were registered by the Respondent primarily for the purpose of selling for valuable consideration in excess of its costs and that the case falls within paragraph 4(b)(i) of the Policy. Further, the retention of the Domain Names for these purposes constitutes use in bad faith.
Given the reputation of the "Nike" brand, the Panel considers that the use of the Domain Names by another person would be likely to cause confusion. The Panel concludes that the Domain Names should therefore be transferred to the Complainant.
The Panel decides that the Domain Names <nikewomen.com>, <nikeshop.net>, <nikeshop.org>, <nike-shop.com>, <nike-shop.net> and <inike.net> should be transferred to Nike, Inc. of One Bowerman Drive, Beaverton, Oregon 97005, USA.
Dated: March 19, 2001