WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike, Inc. v. No Owner / Ashkan Mohammadi
Case No. D2013-1297
1. The Parties
The Complainant is Nike, Inc. of Beaverton, Oregon, United States of America, represented by FairWinds Partners, LLC, United States of America.
The Respondent is No Owner of Tehran, Islamic Republic of Iran / Ashkan Mohammadi of Kezwich, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <nikeiran.com> (the “Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2013. On July 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 19, 2013, the Registrar transmitted by email to the Center its verification response. In response to a request for clarification of the correct identity of the Respondent, the Registrar confirmed the valid and accurate identity of the current Registrant/Respondent of the Disputed Domain Name on July 31, 2013. The Complainant filed an amendment to the Complaint on July 31, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2013.
The Center appointed John Swinson as the sole panelist in this matter on August 30, 2013. 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
The Complainant is Nike, Inc. of the United States of America. It is a famous designer, manufacturer and retailer of footwear, sportswear, athletic equipment and related products and services. The Complainant operates in over 160 countries and employs nearly one million people (either directly or indirectly).
The Complainant holds numerous worldwide trade mark registrations (word and logo) for the trade mark NIKE (together, the “Trade Mark”), registered as early as 1975. It also owns numerous domain names which incorporate the Trade Mark (e.g. <nike.com>, <niketown.com> and <nikedunks.com>).
The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name with the Registrar on October 17, 2011. At the time of the Complaint, it appears that the website at the Disputed Domain Name was for a sportswear store, located in Iran, which sold Nike products. Currently, the Disputed Domain Name contains a link to a website for “internet information services”.
5. Parties’ Contentions
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The mere addition of a generic or short word to a trade mark does not prevent a finding of confusing similarity.
Rights or Legitimate Interests
The Respondent actions are not a bone fide offering of goods or services. The Complainant believes that counterfeit and other unauthorized products bearing the Trade Mark are being sold from the website at the Disputed Domain Name. The Complainant does not have any stores in Iran and does not provide its products to any distributors in Iran. As such, any products offered by the Respondent in Iran are either illegally obtained or counterfeit.
The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not making a legitimate noncommercial use of the Disputed Domain Name, it is being used to divert customers to a website which tarnishes and dilutes the Trade Mark.
Registered and Used in Bad Faith
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trade Mark as to source, sponsorship, affiliation or endorsement of the website, or of products or services on the website.
The Respondent used the Trade Mark without the Complainant’s consent. The Respondent had actual and constructive knowledge of the Complainant’s rights (this is revealed by the content of the website at the Disputed Domain Name). The Respondent is profiting from its infringement of the Complainant’s rights (through customers purchasing the counterfeit or unauthorized goods offered on the website).
The Respondent has failed to reply to communications from the Complainant. Further, the Respondent has listed the registrant as “No Owner” and provides an address in Iran that cannot be verified (the Registrar has confirmed that the correct address is in Canada). This questionable listing further supports a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
A. Procedural Issues
While the Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Previous UDRP panels have found that where a distinctive trade mark is wholly incorporated in a domain name, adding a geographic indicator (e.g. “Iran”) will generally not distinguish the domain name from the trade mark (see e.g. Google Inc. v. Google Adwords Service at HCMC, Vietnam, WIPO Case No. D2013-0298). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the well-known Trade Mark. The geographic indicator “Iran” simply suggests that the Complainant’s products may be purchased in Iran.
It is possible that the Disputed Domain Name could be interpreted as “Nike, I ran” (i.e., similar to “Nike, I jumped”; or “Nike, I walked”), and not to a country. If this is the correct reading of the Disputed Domain Name, because the Complainant makes running shoes, the addition of a generic expression relating to running would not change the Panel’s conclusion in respect of this element.
In light of the above, the Panel finds that the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Respondent has made out a prima facie case, as the Respondent has not:
- used or made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services;
- been commonly known by the Disputed Domain Name; or
- been making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.
The Panel accepts the Complainant’s submission that it does not sell NIKE branded products in Iran. Accordingly, the Panel infers that the Respondent is attempting to derive revenues from the sale of prima facie counterfeit or unauthorized NIKE products. UDRP panels have previously ruled that the use of domain names to sell counterfeit products is not a legitimate use of the domain name (see e.g. Guccio Gucci S.p.A. v. Smith Davilv, WIPO Case No. D2012-0052 and cases cited therein).
Furthermore, the Respondent did not reply to the cease and desist email sent by the Complainant’s authorized representative. UDRP panels have previously ruled that this shows that a respondent has no rights or legitimate interests in a disputed domain name (see e.g. Guccio Gucci S.p.A. v. Smith Davilv, WIPO Case No. D2012-0052 and cases cited therein).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) is particularly relevant here and provides that there is evidence of bad faith where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”.
The Complainant is a very famous sportswear company with distinctive branding. As such, it would be highly unlikely that the Respondent was unaware of the Complainant and its Trade Mark when it registered the Disputed Domain Name in 2011.
The Respondent’s registration of a domain name that wholly incorporates the Trade Mark indicates that the Respondent registered the Disputed Domain Name to mislead Internet users into thinking that its sports store is some way connected, sponsored or affiliated with the Complainant and its business/products, or that the Respondent’s activities are approved or endorsed by the Complainant. The Respondent is trading off the Complainant’s substantial reputation to lead Internet users to a website which advertises a store selling prima facie counterfeit or unauthorised NIKE products, for commercial gain (see e.g. Guccio Gucci S.p.A. v. Domain Administrator – Domain Administrator, WIPO Case No. D2010-1589; Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019). This constitutes bad faith (see e.g. eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633; Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156, and Nicole Richie v. Sonny Ahuja, WIPO Case No. D2012-0500).
Additionally, the following also support a finding of bad faith:
- failure to respond to the cease and desist email (see e.g. LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091 and cases cited therein); and
- the listing of the registrant as “No Owner” and provision of an address in Iran that could not be verified. Previous UDRP panels have held that the deliberate use of incorrect or ineffective contact particulars constitutes bad faith (see e.g. WordPress Foundation v. Guo Lei aka Lei Guo, WIPO Case No. D2011-0932 and cases cited therein).
The Respondent had the opportunity to make submissions to the contrary but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith registration and use and registration of the Disputed Domain Name (see Encyclopedia Britannica Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330, and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633).
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as defined in paragraph 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <nikeiran.com> be transferred to the Complainant.
Date: September 12, 2013