WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NIKE, Inc. v Alex Nike
Case No. D2001-1115
1. The Parties
The Complainant in this administrative proceeding is NIKE, Inc. an Oregon (U.S.) corporation, of One Bowerman Drive, Beaverton, OR 97005, USA, represented by Dorothy C. Alevizatos, Assistant General Counsel, Nike, Inc. The Respondent is Alex Nike, of Lesnaia Ulitsa 8-12, Moscow, RU 220013, Russia.
2. The Domain Name and Registrar
The domain name in issue is <wwwnike.com> ("the Domain Name"), the Registrar of which is Bulkregister.com, Inc ("Bulkregister.com").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on September 11, 2001, an electronic version of the Complaint and on September 19, 2001, a hard copy of the same and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On September 26, 2001, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On September 20, 2001, the Center transmitted via e-mail a request for registrar verification in connection with this case. On September 21, 2001, Bulkregister.com transmitted via e-mail to the Center its Verification Response, confirming that the registrant is Alex Nike, the Respondent herein and stating that the Administrative Contact is Alex Vorot, mail@ADLUXE.COM, Free Domains Parking, Mira Prospect 120-14, Moscow, RU 180012, and the Technical Contact is Vladimir Kopytine, admin@SEXIS.COM, Eurostar Group Inc, 3634 Ross Av, Detroit, MI 48200, USA.
No Response has been filed by the Respondent. The Center attempted to send notification of the Complaint to the Respondent and to the Administrative and Technical Contacts by courier (with all accompanying exhibits) and by e-mail. In each case, the courier was unable to deliver the Complaint because the address was incorrect and/or incomplete. There is nothing to suggest that the e-mail delivery failed. Notification of Default was sent by e-mail to the parties on October 18, 2001. In view of the fact that the Respondent was made aware of the Complainantís objections to the Respondentís registration of the Domain Name before these proceedings were instituted, the Panelist concludes that the Respondent has deliberately chosen not to respond to the Complaint, but that he has received adequate notice of the same.
On October 26, 2001, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by November 9, 2001.
4. Factual Background
(a) The Complainant is the registered proprietor, inter alia, of United States Trade Marks Nos. 978,952, 1,153,938, 1,243,248, 1,277,066 and 1,214,930 covering a broad range of goods and services protecting the mark NIKE ("the Trade Mark")
(b) The Domain Name was registered on December 20, 1999.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:-
(i) The Complainant 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's <nike.com> web site presently receives tens of thousands of visitors each day.
(ii) Since 1971, the Complainant has used and promoted the Trade Mark 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 Trade Mark 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 alone, the Complainant sold several billion dollars worth of "NIKE" brand merchandise.
(iii) The Trade Mark is exceedingly well known, and recognized worldwide as an indication of goods and services emanating from the Complainant.
(iv) The Domain Name is highly similar to the Trade Mark and the widely recognized <nike.com> domain name. Due to the extensive similarity, individuals confronting the Domain Name are likely to be confused, and to believe that the Respondent, his activities, and/or website are connected or affiliated with, sponsored or endorsed by, or emanate from the Complainant.
(v) Indeed, the only discernible difference between the Domain Name and the Trade Mark is Respondentís use of the "www" prefix and in the context of the Internet, the prefix "www" followed by a period Ė i.e. "www." Ė is a technically required portion of every web address. The "www." prefix is thus purely functional when used in the context of the Internet, a fact that is demonstrated by the U.S. Patent and Trademark Officeís refusal to consider the prefix as capable of serving any source identification role:
"When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address".
(Section 1, U.S. Patent and Trademark Office Examination Guide No. 2-99, "Marks Composed, in Whole or in Part, of Domain Names" (September 29, 1999.))
(vi) By adding the "www" prefix to the Trade Mark, the Respondent has failed to create a second level domain name that is distinguishable from the Trade Mark. The difference between the Domain Name and the Trade Mark is insignificant and irrelevant. Indeed, consumers are likely to go to the Respondent's web site to seek out the Complainant. Given the fame of the Complainant's mark and trade name, this similarity does not appear coincidental.
(vii) On November 29, 2000, the Complainant sent a letter to the Respondent placing the Respondent on notice of his ongoing trademark infringement and dilution of the Complainant's trademarks, and seeking transfer of the Domain Name. The Complainant's letter also offered to reimburse the Respondent for his out-of-pocket costs in registering the domain name. The Complainant has received no response from the Respondent.
(viii) The Respondent has no discernable legitimate interest in the "NIKE" designation. It does not appear that Respondent has ever been commonly known by the Domain Name. The Respondent has never used any trademark or service mark similar thereto by which it may have come to be known. (Indeed, such use by the Respondent would likely have constituted legally actionable infringement and dilution of the Trade Mark.) Further, the Respondent has no relationship whatsoever with the Complainant.
(ix) The Respondent registered the Domain Name in bad faith, since he knew at the time of the fame and the Complainant's ownership of the Trade Mark. The Respondent could readily foresee that people would assume the Domain Name to be connected with the Complainant, that the public would seek out this site in the hope of finding the Complainant's site, and that the Complainant would therefore wish to own and use it.
(x) Moreover, the Complainantís use of the "www" prefix without the period is a blatant form of cyberpiracy commonly known as "typo-squatting." Respondent has intentionally omitted the period following the "www" prefix in an unconcealed attempt to create confusion between the Complainantís site and his own, and to divert Internet traffic from the Complainantís web site to the Respondentís. This specific form of typo-squatting has been recognized as a bad faith use of a domain name by several tribunals under the UDRP.
(xi) The Respondentís piracy is rendered particularly egregious in that the Respondent uses the Domain Name in connection with an Internet gambling site. When one considers the high number of children who are likely to access the Complainantís site, in conjunction with the fact that their inexperience may render them more likely to make typographical errors, the Respondentís behaviour is even more reprehensible.
As noted above, no Response has been filed.
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN Policy, as follows:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
As to element (i), the Panelist has no hesitation in accepting the Complainant's submission that the only distinctive element of the Domain Name is the very well-known mark NIKE, the Complainant's trade mark. The addition of the letters "www" as a prefix in the context of a domain name is wholly non-distinctive for the reasons given in paragraph 5(A)(v) above. The Domain Name is undoubtedly confusingly similar to the Trade Mark NIKE.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that he has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). The facts put forward by the Complainant suggest (see paragraph 5(xi) above) that the Respondent's interest in the Domain Name was not in connection with a bona fide offering of goods or services, but rather to take advantage of the reputation of the Complainant's Mark to attract potential customers to an Internet gambling site. In the absence of any justification from the Respondent of the activities in relation to the Domain Name, the Panelist concludes that the Complainant has established element (ii).
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies.
Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:
"by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [Respondent's] web site or location, or of a product or service on [Respondent's] web site or location."
Given the undoubted worldwide fame of the Trade Mark, the inference that the Domain Name was registered in bad faith is irresistible. Despite the fact that the Respondent's surname is apparently "Nike", the Panelist can see no justification for his registration of a domain name that does not distinguish itself from the Complainant's <nike.com>. Further, in the light of the circumstances alleged in paragraph 5(A)(xi) above the Respondent's activities come within the terms of (iv) of paragraph 4(b) of the Policy.
The Panelist therefore concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 7 above, the Panelist concludes that:-
- the domain name <wwwnike.com> is confusingly similar to the trade mark NIKE of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name; and
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the Domain Name <wwwnike.com> be transferred to the Complainant, NIKE, Inc.
Dated: November 7, 2001