WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NIKE INNOVATE C.V. v. Registration Private, Domains By Proxy, LLC / Gueijuan Xu / Xu Gueijuan

Case No. D2018-0360

1. The Parties

The Complainant is NIKE INNOVATE C.V. of Beaverton, Oregon, United States of America (“United States”), represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Gueijuan Xu of Shaoguanshi, Guangdong, China / Xu Gueijuan of Shaoguan, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <cheapnikeukoutletonline.com>,<cheapsnikeoutletfactory.com>, <discountnikeoutletshop.com>, <nikeairmax90ultra.com>, <nikeairmax97.com>, <nikeairvapormaxflyknit.com>, <nikeausalefactory.com>, <nikeclearanceusastore.com>, <nike-trademark.com>, <nikeuksalecheap.com>, <nikeukstoreshop.com>, <nikeusaclearanceshop.com>, <nikevapormax2018.com>, <nikezoomvaporflyelite.com>, <shopnikefactoryoutlet.com>, <shopnikehuaracheru.com>, <shopnikeonlinestore.com>, <shopsnikeukoutlet.com>, <storenikekutujp.com> and <2018vapormax.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2018. On February 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 2, 2018. The Complainant filed a second amended Complaint on March 13, 2018.

The Center verified that the Complaint together with the first and second amended Complaints 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2018.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 13, 2018. 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 in the business of footwear, clothing, and accessories. The Complainant is a subsidiary of Nike, Inc., the owner, amongst several others, of the following trademark registrations and applications:

- United States Trademark Registration No. 978952 for the word mark NIKE filed on January 31, 1972, registered on February 19, 1974, successively renewed, in international class 25;

- United States Trademark Registration No. 5286596 for the word mark NIKE AIR VAPORMAX filed on June 19, 2014 and registered on September 12, 2017 in international class 25; and

- United States Trademark Application No. 87797553 for the word mark VAPORMAX filed on February 14, 2018 in international class 25.

The domain names in dispute are the following and are presently used in connection with:

5. Parties’ Contentions

A. Complainant

The Complainant claims having adopted the NIKE trademark in 1971, and is currently the world’s leading manufacturer of sports shoes and sports equipment. The NIKE trademark has been registered in several countries around the world (Annex 4 to the Complaint) and can be considered one of the most widely recognized in the world, having been valued at USD 27.021 billion in Interbrand’s 2017 rank.

Furthermore, the Complainant points out that previous UDRP decisions have already recognized that the NIKE trademark is well known and has “undoubted worldwide fame”.

According to the Complainant, the disputed domain names incorporate the NIKE and VAPORMAX trademarks bearing, in some of the cases, the addition of descriptive or generic terms such as “shop”, “store”, “outlet”, etc., which either describe a store or online e-commerce site, or geographical terms or acronyms such as “au”, “uk”, and “us”, which makes them confusingly similar to the trademarks in which the Complainant has rights.

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:

i. the Respondent has no rights in relation to the NIKE and VAPORMAX trademarks;

ii. bearing in mind the massive reputation of the NIKE trademark there is no believable or realistic reason for the registration of the disputed domain names by the Respondent;

iii. the Respondent engaged in a pattern of registering a number of domain names seeking to unfairly benefit from the Complainant’s reputation;

iv. one of the disputed domain names is being redirected to the Complainant’s official website, creating the impression that the disputed domain name is owned and controlled by the Complainant;

v. three of the disputed domain names have been used to sell counterfeit goods; and

vi. even if the disputed domain names were being used to sell legitimate goods, the absence of a disclaimer in the websites disclosing the lack of a relationship between the parties cannot be considered a bona fide use of the disputed domain names.

As to the registration and use of the disputed domain names the Complainant states that:

i. the Respondent has registered and is using the disputed domain names to disrupt the Complainant’s business, where the <nike-trademark.com> disputed domain name has been used to fraudulently impersonate a genuine email account of the Complainant and to obtain sensitive information;

ii. three of the disputed domain names have been used to sell counterfeit goods;

iii. the famous Nike logo (referred to as “Swoosh design”) is also depicted in the webpages to which Internet users are redirected in connection with some of the disputed domain names;

iv. by having registered a number of domain names, the Respondent engaged in a pattern of conduct preventing the Complainant from reflecting its marks in the disputed domain names; and

v. the Respondent has also registered other well-known trademarks and has been named Respondent in at least four other UDRP procedures (Tumi Inc. v. Gueijuan Xu, WIPO Case No. D2017-1773; PRADA S.A. v. Artemis Davis / Mo Zeghloul / Xinqian Rhys / Xiayu Zhi / Gueijuan Xu, WIPO Case No. D2017-2069; Cube Limited v. Gueijuan Xu, WIPO Case No. D2017-2514; and Philipp Plein v. Gueijuan Xu, WIPO Case No. D2017-2535).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights (under the name of Nike, Inc.) over the trademarks NIKE and NIKE AIR VAPORMAX.

The disputed domain names, according to the chart below all incorporate at least one of these trademarks and bear the addition of either (i) one of the Complainant’s products’ name, or (ii) acronyms that potentially refer to geographical terms, or (iii) descriptive terms relating to the commercialization of goods.

None of these additions, however, add any distinctiveness to the well-known and reputable NIKE trademark.

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain names. These circumstances are:

i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

ii. the Respondent (as individuals, businesses, or other organizations) has been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.

In that sense, and according to the evidence submitted, there is no evidence that the Respondent has been commonly known by the disputed domain names.

Also according to the evidence submitted by the Complainant, one of the disputed domain names was used in connection with the impersonation of a high-level legal counsel within the Complainant’s team so as to obtain sensitive information. This clearly indicates a lack of any right of legitimate interest on the part of the Respondent. The redirection of one of the disputed domain names to Complainant’s official website enhances the likelihood of confusion by Internet users who may also be exposed to similar scams perpetrated by the Respondent.

In addition to that, the use of three of the disputed domain names to sell counterfeit goods also does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.

The reproduction of the notorious “swoosh design” in some of the websites further enhances the likelihood of confusion and even if the disputed domain names were being used to sell legitimate goods, the absence of a disclaimer in the websites disclosing the lack of a relationship between the parties cannot be considered a bona fide use of the disputed domain names. In addition, although some of the disputed domain names do not resolve to an active website or resolve to parked pages, the nature of all the disputed domain names comprising a trademark plus a descriptive term or a model of the Complainant’s products also enhances the likelihood of confusion.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the reproduction of the NIKE and NIKE AIR VAPORMAX trademarks, as well as the impersonation of a senior counsel for the Complainant in connection with a scam seeking to obtain sensitive information.

Other factors corroborate a finding of bad faith:

a. the fact that the Respondent has engaged in what appears to be a pattern of registering well-known trademarks as domain names, having been named Respondent in at least four other URDP cases;

b. the use of three of the disputed domain names to sell counterfeit goods;

c. the Complainant’s mark is one of the most valuable trademarks in the world, and the Respondent reproduced the Complainant’s well-known logo and products in some of the webpages to which Internet users are redirected;

iv. by having registered a number of domain names, the Respondent engaged in a pattern of conduct preventing the Complainant from reflecting its marks in the disputed domain names; and

v. the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain names.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

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 names <cheapnikeukoutletonline.com>, <cheapsnikeoutletfactory.com>, <discountnikeoutletshop.com>, <nikeairmax90ultra.com>, <nikeairmax97.com>, <nikeairvapormaxflyknit.com>, <nikeausalefactory.com>, <nikeclearanceusastore.com>, <nike-trademark.com>, <nikeuksalecheap.com>, <nikeukstoreshop.com>, <nikeusaclearanceshop.com>, <nikevapormax2018.com>, <nikezoomvaporflyelite.com>, <shopnikefactoryoutlet.com>, <shopnikehuaracheru.com>, <shopnikeonlinestore.com>, <shopsnikeukoutlet.com>, <storenikekutujp.com> and <2018vapormax.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: April 27, 2018