WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nike, Inc. v. Aladin Hammam

Case No. D2001-1114

 

1. The Parties

Complainant is Nike, Inc., an Oregon corporation, with its principal place of business at One Bowerman Drive, Beaverton, OR 97005, United States of America. Complainant is represented by Dorothy C. Alevizatos, Assistant General Counsel, NIKE, Inc.

Respondent is Aladin Hammam whose address in the records of the Registrar, Network Solutions, Inc., is shown as Sonnrainweg 8, St. Gallen, St. Gallen 9008, Switzerland.

Respondent advised in an e-mail to Complainant dated October 2, 2001 that his current address is Neikenstrasse 16, 9500 Wil SG, Switzerland.

 

2. Domain Name and Registrar

The domain name in issue is <justdoit.org>.

The registrar is Network Solutions, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Nike, Inc.ís complaint in hard copy on September 11, 2001, and via email on September 19, 2001. The Center transmitted by email an Acknowledgement of Receipt of Complaint to the Complainant and to the Respondent on September 13, 2001.

On September 17, 2001, the Respondent transmitted via email a message to the Center advising that he had received a message that Nike is complaining and that he thought that everybody could use the expression "justdoit". Respondent claimed he used his site for absolutely private purposes and did not intend to harm the image of Nike. Respondent requested the Center to provide him with more information.

On September 17, 2001, the Center responded by email to the Respondent, advising the Respondent that the Administrative Proceeding had not yet commenced and that the Center would notify all Parties of the Commencement of the Proceeding after they obtained a verification from the Registrar. The Center advised that if parties wish to engage in any settlement outside the Centerís Dispute Resolution Service, Complainant should submit a request for case withdrawal or suspension.

On September 17, 2001, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case. On September 18, 2001, Network Solutions, Inc. transmitted via email to the Center Network Solutionsí confirmation that (1) Aladin Hammam is the registrant of the domain name in issue, (2) the Policy applies to the domain name, and (3) the current status of the domain name is "active". Network Solutions, Inc. advised that the registrantís address shown in their records is Sonnrainweg 8, St. Gallen, St. Gallen 9008, Switzerland and that the administrative contact is shown as Hammam, Aladin with an email address at aladin_hammam@hotmail.com. Respondentís technical contact is Hostmaster, Honegger whose email address is mailto:domreg@AGRI.CH and whose mailing address is Cable + Wireless Global (Switzerland) AG, Im Steiger 50, Brugg, AG 5201, Switzerland.

The Center verified that the Complaint 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). Nike, Inc. made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is September 20, 2001.

On September 20, 2001, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent Mr. Aladin Hammam and to Respondentís Technical Contact via email and via post/courier to the addresses provided by the Registrar, Network Solutions, Inc. In the Notification, the Center advised that the response was due by October 10, 2001, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response was not sent by October 10, 2001, including inter alia that an Administrative Panel would be appointed to review the facts and decide the case, and the Panel may draw appropriate inferences in the event of default.

On October 2, 2001, the Respondent sent by email to the Center a copy of an email sent to Mrs. Alevizatos of Nike Inc. in which he advised Mrs. Alevizatos that he was "willing to get this Domain Name transferred to Nike"; he advised that he had not received any earlier correspondence from Nike which might be due to the fact that he moved from the registered address on or about November 2000. Respondent provided his new address and advised Nike that he had not registered the domain name in bad faith, was not interested in earning money and only registered the site to get practice designing a home page for his IT studies and that he chose the name as it is an internationally known phrase.

Subsequently on October 2, 2001, the Center forwarded the Respondentís communication to the Complainant and advised that "any further action taken by the parties - i.e. settlement of case by negotiation Ė should be notified to the Center as soon as possible". The Center requested confirmation of receipt by Complainant of the communication and Complainant provided confirmation of receipt to the Center on October 2, 2001.

Later on October 2, 2001, the Complainant transmitted an email to Respondent thanking him for his agreement to transfer the domain name to Nike, Inc. and advising that Nikeís administrator would send the forms to Respondent for execution, notarization by an appropriate authority and return to Nike, Inc. Complainant advised that the WIPO proceeding will continue until the transfer has been completed.

On October 2, 2001, Respondent emailed Mrs. Alevizatos requesting an explanation of "the costs of this transfer and the other costs that I have". On October 3, 2001, Mrs. Alevizatos replied that there are no costs associated with the transfer. On October 5, 2001 Mrs. Alevizatos emailed the Respondent advising that Nike, Inc. would agree to reimburse him for his documented expenses in registering the name.

Between October 5 and 16, 2001, no further correspondence between the Parties was received by the Center. On October 16, 2001, the Center emailed the Parties advising them that the deadline for Respondentís submission has passed. The Center advised that unless the Parties advised the Center otherwise, by requesting case suspension of withdrawal, the Center would proceed to send out Notification of Respondent Default and would appoint the Panel.

On October 17, 2001, the Respondent advised the center via email that he had declared his willingness to get this settled which is why he did not proceed (by filing a Response). Respondent advised he had received no papers from Nike to get the domain name transferred.

On October 17, 2001, the Center forwarded an email to the Parties advising that if the parties were engaged in a tentative settlement the Complainant should forward a request to suspend the proceedings. If the Parties agreed to settle the case, Complainant must submit a request for case withdrawal. Unless a communication was received by October 18, 2001, at 17.00 hrs Central European time, the Center would send out Notification of Respondent Default and would appoint the Panel.

On October 22, 2001, the Center emailed the Parties advising that as it was not in receipt of any communication from the Complainant following the email sent out on October 17, 2001, from the Center, the Center was transmitting via email to Aladin Hammam the Notification of Respondent Default, said document being attached to the email. In the Notification of Respondent Default, the Center advised Mr. Hammam inter alia (1) he had failed to comply with the deadline for submissions of a response, (2) the Center would proceed with the appointment of an Administrative Panel, (3) the Panel would decide in its discretion whether to consider a response if one were to be submitted later.

On November 7, 2001, the Center advised the parties via email of the appointment of Ross Carson as the sole Panelist, and advised that the decision was due November 21, 2001. The Center also forwarded the Case File to the Panelist by email and courier.

 

4. Factual Background

The Trademark

Complainant owns numerous trademark registrations worldwide for its well known "JUST DO IT." trademark, including United States registration nos. 1,875,307, 1,931,937, and 1,817,919, as well as Australian registration nos. A578679, Canadian registration no. TMA 477,741 and European Union registration no. 000 514 984 for use in connection with a broad range of goods and services. Copies of these registrations are attached to the Complaint as Annex C.

Complainant submits that it has used and promoted its "JUST DO IT." trademark worldwide since 1992 in connection with footwear, apparel, equipment, retail store services, web-based communication, informational services, and other related goods and services.

 

5. Partiesí Contentions

Complainant

Complainant avers that all three elements of Policy, Paragraph 4.(a) are met because:

1. the domain name in issue is identical or confusingly similar to a mark in which Complainant has rights;

2. respondent has no rights or legitimate interests in the domain name; and

3. the domain name was registered and is being used in bad faith by respondent.

a. Confusing Similarity

Complainant owns numerous trademark registrations worldwide for its JUST DO IT trademark for use in connection with a broad range of goods and services. Complainant asserts the domain name at issue <justdoit.org> is identical to Complainantís famous trademark JUST DO IT. Due to the similarity, individuals confronting Respondentís domain name are likely to be confused and to believe that Respondent, his activities and/or web site are connected or affiliated with, sponsored or endorsed by, or emanate from Complainant.

b. Respondent has no rights or legitimate interest in the domain name

Complainant asserts Respondent has no rights or legitimate interests in the designation JUST DO IT. Complainant states that Respondent has never been commonly known by the domain name and has never used any trademark or service mark similar thereto by which it may have come to be known. Complainant submits that its trademark is recognized worldwide and Complainant has been careful to prevent conflicting uses of its trademark from emerging. Few, if any, individuals worldwide have any legitimate interest in any commercial designation containing Complainantís JUST DO IT trademark. Complainant submits that this further reduces the likelihood that Respondent has any interest in the JUST DO IT designation.

Complainant submits that it is more likely that Respondent is but one of many "cybersquatters" seeking to profit from Complainantís world famous.

Complainant submits that Respondent has not responded to any of Complainantís attempts to contact Respondent at all available addresses. Complainant attaches to the Complainant as Annex D a copy of a letter dated February 28, 2001, from the Complainant to the Respondent placing Respondent on notice of his ongoing trade mark infringement and dilution of Complainantís trademark, and seeking transfer of the domain name <justdoit.org> from Respondent to Complainant. Complainant offered to reimburse Respondent for his out-of-pocket costs in registering the domain name. The letter was sent to Respondent by courier to Respondentís address provided by Network Solutions, Inc. Complainant did not receive a reply to the letter.

Complainant avers that Respondent renewed the <justdoit.org> domain name for an additional two-year period and recently began to make nominal use of the domain name by establishing some sort of informational site. Complainant submits that the use of the web site does not constitute a legitimate business purpose, and appears merely intended to avoid a claim of non-use of the site.

c. Respondentís Bad Faith

Complainant avers Respondent has registered and used the domain name in issue in bad faith. Complainant submits that Respondent knew at the time of the fame of the trademark JUST DO IT and Complainantís ownership of said trademark and that Respondent could foresee that people would assume the <justdoit.org> domain name to be connected with Complainant and would seek out this site in the hope of finding Complainantís site.

Complainant further submits that Respondentís use and registration of <justdoit.org> has prevented Complainant from using its own world-famous trademark in this domain name, and that this conduct of Respondent constitutes bad faith registration and use of the domain name.

Respondent

Respondent failed to file a Response by the required deadline. In light of Respondentís failure to respond, the Panel has elected to decide this dispute based upon the Complaint. Rules, Paragraphs 5.(e) and 14.(a).

 

6. Discussion and Findings

Paragraph 4.(a) of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to a mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4.(a)(iii) above, if proved by a complainant, shall be evidence of a respondentís registration and use of a domain name in bad faith.

Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.

a. Preliminary Observations

The Panel has assured itself that the parties have been treated with equality and respondent has been given a fair opportunity to present its case. (Rules, Paragraph 10.(b)) Accordingly, in the Panelís view, respondent has been afforded due process.

A review of emails between the Parties after the notification of commencement of the present proceeding was sent to the Respondent shows that on October 2, 2001, the Respondent sent by email to the Center a copy of an email sent to Mrs. Alevizatos of Nike Inc. in which he advised Mrs. Alevizatos that he was "willing to get this Domain Name transferred to Nike"; he advised that he had not received any earlier correspondence from Nike, which might be due to the fact that he moved from the registered address on or about November 2000. Respondent provided his new address. He also advised Nike that he had not registered the domain name in bad faith, was not interested in earning money and only registered the site to get practice designing a home page for his IT studies and that he chose the name as it an is internationally-known phrase.

On October 2, 2001, the Center forwarded the Respondentís communication to the Complainant and advised that "any further action taken by the parties - i.e. settlement of case by negotiation Ė should be notified to the Center as soon as possible".

Also on October 2, 2001, the Complainant transmitted an email to Respondent thanking him for his agreement to transfer the domain name to Nike, Inc. and advising that Nikeís administrator would sent the forms to Respondent for execution, notarization by an appropriate authority and return to Nike, Inc. Complainant advised the Respondent that the WIPO proceeding will continue until the transfer has been completed.

In an email dated October 5, 2001, Mrs. Alevizatos advised the Respondent that Nike, Inc. would agree to reimburse him for his documented expenses in registering the name. This was the last correspondence between Complainant and Respondent which was copied to the Center.

On October 17, 2001, the Respondent advised the Center via email that he had declared his willingness to get this settled which is why he did not proceed (by filing a Response). Respondent advised he had received no papers from Nike to get the domain name transferred.

On October 17, 2001, the Center forwarded an email to the Complainant and Respondent advising that if the parties were engaged in a tentative settlement the Complainant should forward a request to suspend the proceedings. No such request was received.

The Panel has reviewed the submissions and also the email correspondence attached to the Complaint at Annex 9. In the Notification of Complaint dated September 20, 2001, the Center advised that the response was due by October 10, 2001, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response was not sent by October 10, 2001. The Respondent was advised by Complainant on October 2, 2001, that the WIPO proceeding would continue until the transfer of the domain name from Respondent to Complainant was completed. Respondent was aware of the deadline of October 10, 2001, for filing a Response and had sufficient time to prepare and file a Response.

b. Identical or Confusing Similarity

Complainant has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy. It is especially important in a default situation that a Complainant meet its burden of proof.

Complainant contends that its mark and Respondentís domain name are identical.

There is no question from this record that Complainant has rights in the mark on which it relies. The disputed domain name <justdoit.org> is confusingly similar to Complainantís trademark JUST DO IT.

The Panel finds that the domain name in dispute and the Complainantís trademark are confusingly similar.

c. Rights or Legitimate Interests

Complainant has demonstrated registration and use of the trademark JUST DO IT with respect to footwear, clothing, sports clothing, sports bags, handbags and travel bags and certain services. The mark has been in continuous use since at least as early as 1989. The Complainant has established by reference to a survey that the trademark JUST DO IT distinguishes the Complainantís goods to a substantial portion of the public in the United States of America. The Complainant states that its trademark is famous and the Respondent has not made any statement to the contrary.

The Complainant states that Respondent has never used any trademark or service mark similar to JUST DO IT in relation to goods or services. The Respondent did not dispute the fact that the Respondent has not used any trademark or service mark similar to JUST DO IT in relation to goods or services. The Complainant states that the Respondent has recently begun to establish some sort of informational site at <justdoit.org>. A visit to the website at <justdoit.org> discloses that the website offers a list of "Wichtige Internetadressen" (Important Internet Addresses) with links to websites.

The Complainantís trademarks and service mark JUST DO IT are very well known and this is particularly so with respect to consumers of sports footwear and clothing over the past ten years. The Respondent has not filed a Response to show a right or legitimate interest in JUST DO IT. On a balance of probabilities and taking into account that the Respondent has not taken advantage of an opportunity to file proof of rights and a legitimate interest in <justdoit.org>, I find that the Complaint has established that the Respondent has no rights or legitimate interests in the domain name.

d. Registration and Use in Bad Faith

The third matter which the Complainant must prove is that the domain name has been registered and is used in bad faith.

At the date of registration the trademark JUST DO IT was a very well-known trademark and on a balance of probabilities the Respondent knew of the trademark and Respondent could foresee that people would assume that the <justdoit.org> domain name was associated with the Complainant. The Respondent agreed to transfer the domain name in dispute to the Complainant.

The Respondent was a passive holder of the domain name until recently when the Respondent opened a web page linked to various other web sites. The Administrative Panel in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 stated at Paragraph 7.9 "... the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but whether, in all the circumstances of the case it can be said that the Respondent is acting in bad faith". The Respondent did not file a Response with any facts contesting the Complainantís submission that the domain name <justdoit.org> was registered and is being used in bad faith. The Respondent must be aware that by use of the domain name <justdoit.org> he has attracted people to the Respondentís recently activated website which many of the public associate with the Complainant. The Respondent is depriving the Complainant of using the domain name <justdoit.org>, which many of the public associate with the Complainant.

The Panel finds that the Respondent registered and is using the domain name in dispute in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights.

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) The Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <justdoit.org> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Dated: November 21, 2001