WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim
Case No. D2003-0269
1. The Parties
The First Complainant is Nordstrom, Inc. of Seattle, Washington, United States of America and the Second Complainant is NIHC, Inc. of Portland, Oregon, United States of America, both represented by Eversheds Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Inkyu Kim of Koyang, Kyungki, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <nkids.com> is registered with Domain Bank.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2003. On April 10, 2003, the Center transmitted by email to Domain Bank a request for registrar verification in connection with the domain name at issue. On April 14, 2003, Domain Bank transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on April 16, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2003.
The Center appointed Hariram Jayaram as the sole panelist in this matter on June 4, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
In their Complaint, the Complainants state that the First Complainant is a well known fashion retailer, offering a wide variety of fine quality clothing, shoes and accessories for men, women and children. It began trading in 1901 and since that date it has established 143 stores in 27 states throughout the United States of America. For the year ended January 31, 2002, its net sales were in excess of USD 5,600,000 and its gross profit was USD 3,765,859. In 1993, it launched a range of clothing for children under the name N KIDS. During the last financial year, its N KIDS range of clothing generated retail purchases of approximately USD 44 million. It has spent around USD 1 million advertising and promoting the name N KIDS. Its website is at "www.nordstrom.com" on which it advertises and promotes its N KIDS range of products. Since the launch of N KIDS approximately 10 years ago, it has made substantial use of the name N KIDS. It has sold a substantial number of products under the N KIDS name throughout the world, including South East Asia, South Africa and Europe.
The US trademark number 1853152 for the word N KIDS was originally registered by the First Complainant on September 6, 1994. On March 31, 1997, the First Complainant assigned its rights in the N KIDS trademark to NTN, Inc (a wholly owned subsidiary of the First Complainant). Subsequently, on January 31, 1999, NTN, Inc licensed to the Second Complainant the right to use and sub-license the N KIDS trademark. On the same day, the Second Complainant assigned its rights in the N KIDS trademark to N2HC, Inc. On February 1, 1999, N2HC, Inc licensed the use of the N KIDS trademark to the First Complainant. Subsequently, on January 29, 2001, NTN, Inc assigned its rights in N KIDS trademarks to the Second Complainant. The Community Trademark number 163071 for the word N KIDS was filed by the First Complainant on April 1, 1996, and registered on May 3, 2002, in respect of class 25 goods i.e. infants, toddlers and children’s apparel.
In or around May 2000, the Complainants became aware that the Respondent had registered the disputed domain name. On August 17, 2000, the Complainants’ Corporate Paralegal sent an email to the Respondent to notify him of the Complainants’ rights in the name N KIDS and to seek the transfer of the disputed domain name. Despite further chasing emails, the Respondent did not reply until January 30, 2001. In the email, the Respondent stated that he "wanted to open a site for my purposes. The site is under developing [sic] now…" and that he did not "have any intention to violate any law or hurt any right." On May 7, 2001, August 10, 2001, and September 25, 2001, the Complainants’ Corporate Paralegal sent further emails to the Respondent. The Respondent did not reply to these emails. On February 20, 2002, the Respondent renewed the registration of the disputed domain name notwithstanding that he was aware of the Complainants’ rights in the disputed domain name. On March 20, 2002, and June 10, 2002, the Complainants’ Corporate Paralegal sent further emails to the Respondent. The Respondent replied on June 10, 2002. The Complainants’ Corporate Paralegal attempted to resolve the matter again on June 11, 2002, but did not receive any further replies.
5. Parties’ Contentions
In the Complaint, the Complainants contend that the disputed domain name is almost identical to the Complainants’ trademark in which the First Complainant has a substantial reputation. The difference between the trademark and the disputed domain name is minimal. In the disputed domain name, there is no space between the letter ‘N’ and the word ‘KIDS’ although there is such a space in the trademark. The Complainants believe that by the Respondent’s use of the disputed domain name, there is a risk that the public will be confused. This risk of confusion is heightened because many members of the public seeking the First Complainant's N KIDS products are likely to search the Internet using only the word NKIDS since the public may consider that this was sufficient to enable the First Complainant's website to be found. As an address bar automatically defaults to the ".com" designation, the browser would be diverted to the disputed domain name. This would lead to confusion on the part of the public. The Respondent’s use of the disputed domain name takes unfair advantage of and/or is detrimental to the distinctive character of the First Complainant's reputation in its trademark N KIDS. The Complainants’ trademark may be tarnished or diluted by the registration of the disputed domain name by the Respondent.
The Respondent has no legitimate interest in the disputed domain name. So far as the Complainants are aware, there is no evidence to suggest that the Respondent has become known by the disputed domain name in Korea. Before any notice of the dispute, the Respondent has not made any preparations to use the disputed domain name in connection with bona fide offering of goods or services and since the date of registration, the Respondent has not made any use of it. The disputed domain name merely resolves to a holding page which appears to be provided by Domain Bank. The Respondent has not provided the Complainants with a plausible reason why he decided to obtain registration of the disputed domain name. The word N KIDS is an invented name; it is a made up name which the First Complainant uses in connection with the provision of children’s clothes. It uses the letter "N" in connection with a number of its other products, including "BABY N". It is the registered proprietor of a number of "N" designs. The Complainants’ enquiries have confirmed that despite the registration of the disputed domain name on February 20, 2000, and the subsequent renewal of the registration on February 20, 2002, no website has been set up by the Respondent. The Respondent cannot credibly argue that he has a bona fide intention to use the disputed domain name. The Respondent’s registration prevents the Complainants from registering and exploiting the disputed domain name.
The Complainants consider that the registration was obtained in bad faith and that the disputed domain name is being used in bad faith. The Respondent appears to be passively holding the disputed domain name. The First Complainant has built up a substantial reputation in the name N KIDS, particularly in the United States although it does sell products in the N KIDS range throughout the world. The Respondent is not commonly known by the disputed domain name and the disputed domain name is not a registered business name of the Respondent. He is an individual who is based in Korea. The fact that he is not using the disputed domain name for a legitimate personal or business purpose is plainly a factor which should be taken into account in relation to the issue of bad faith registration. He has not responded to every e-mail sent by the Complainants’ Corporate Paralegal over the past two years; he has only replied to 2 out of 9 emails on January 30, 2001, and June 10, 2002. He is using the disputed domain name merely as a spoiling tactic to stop the Complainants from using the disputed domain name. Notwithstanding that he was notified of the Complainants’ rights in the words N KIDS, he renewed his registration of the disputed domain name on February 20, 2002, although he has not, in over 2 years, made any serious preparations to use the disputed domain name.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants claim rights in N KIDS. To show that they are the owners of the trademark N KIDS, the Complainants have produced extracts relating to the registration of the US Trademark No. 1853152 and the Community Trademark No. 163071. They have also produced evidence to show extensive use of the trademark in the United States of America.
When a comparison is made between the disputed domain name and the trademark, the Panel finds that the disputed domain name is identical to the trademark N KIDS.
B. Rights or Legitimate Interests
The Complainants assert that the disputed domain name merely resolves to a holding page maintained by Domain Bank; that there were no preparations by the Respondent to use the disputed domain name despite having registration of the same for over 2 years; that the Respondent is not commonly known by the disputed domain name; nor has he registered the disputed domain name as his business name. The Respondent has not availed himself of his rights to respond to the Complaint.
The Panel is left to conclude that the Respondent has no evidence to rebut the assertions of the Complainant. The finding is that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent has registered the disputed domain name despite having no connection with the trademark N KIDS. By his conduct, he has prevented the Complainants from registering a domain name which reflects their trademark N KIDS. Although the registration of the disputed domain name was effected on February 20, 2000, the Respondent has made no preparations to use it. His passive holding of the disputed domain name amounts to bad faith (see: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003).
The Panel finds that there is bad faith on the part of the Respondent.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nkids.com> be transferred to the Second Complainant, NIHC, Inc.
Date: June 18, 2003