WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike Innovate C.V. v. Li Jian Fan
Case No. D2018-1962
1. The Parties
The Complainant is Nike Innovate C.V. of Beaverton, Oregon, United States of America, represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Li Jian Fan of Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <authenticjordansair.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 30, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On September 2, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceedings commenced on September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on October 12, 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 the trademark-owning subsidiary of publicly traded multinational company Nike, Inc., headquartered in the United States of America. The Complainant and Nike Inc. are active in the clothing industry.
The Complainant owns a portfolio of trademark registrations for JORDAN (word marks) in a large number of jurisdictions throughout the world, e.g., Japanese word mark number 5255737, registered on August 7, 2009 and European Union word mark number 6792485, registered on December 11, 2008.
The disputed domain name was registered on March 31, 2013. The disputed domain name revolves to a website that purports to sell “Jordan” sneakers.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is confusingly similar to its prior trademarks for JORDAN, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the clothing industry, and provides sales numbers of products carrying its trademarks as well as evidence regarding the advertising campaigns it has conducted to promote its trademarks. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active website, using the Complainant’s trademarks, and offering counterfeit products for sale to consumers. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the domain name and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement. However, the Panel is given the authority to determine a language of proceeding other than the language of the Registration Agreement, taking into account the circumstances of every individual case.
According to the Complainant, the Registration Agreement is written in English, and the Complainant requests that the language of proceedings be English. However, according to the information provided by the Registrar eName Technology Co., Ltd, the Registration Agreement is in Chinese.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the lack of response of the Respondent (the Panel notes that the Respondent’s rights have not been violated since the Respondent had the opportunity to put forward arguments in either English or Chinese); and the fact that the website to which the disputed domain name leads, contains not a single word in Chinese and only contains text in English, so that the Panel concludes that the Respondent is capable to read and write in English. In view of all these elements, the Panel concludes that the language of proceedings shall be English.
6.2. Discussion and Findings
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Based on the evidence submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
On the basis of the evidence submitted by the Complainant, the Panel finds that the Complainant has shown that it has valid rights in the trademark JORDAN, taking into account its use and registration of the same as a trademark in a large number of jurisdictions throughout the world.
Moreover, as to confusing similarity, the disputed domain name consists of the trademark JORDAN with the addition of the elements “authentic” and “air”. In accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, the descriptive element “authentic” does not prevent a finding of confusing similarity under the first element. The addition of the element “air”, also does not distinguish the disputed domain name from the Complainant’s trademarks. Furthermore, the Complainant proves that it has been making intensive use of the sign “Air Jordan” as an unregistered trademark for one of its shoe product lines. The Complainant provides evidence of longstanding use of such unregistered trademark since 1984, and proves that it obtained a significant number of sales with, and has invested significantly in the advertising for this unregistered trademark. Accordingly, the sign “Air Jordan” fulfills the requirements set out in WIPO Overview 3.0, section 1.3, to be protected, even by itself, as an unregistered trademark owned by Complainant.
On the basis of these elements, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered and unregistered trademarks, so that the first element required by the Policy is fulfilled.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. Indeed, in the absence of any license, distribution agreement or other permission from the trademark owner (here the Complainant), no bona fide or legitimate commercial use of a domain name fully incorporating the Complainant’s valid prior trademarks could reasonably be claimed. The Panel notes that the Respondent is not an authorized reseller or distributor, and is not making a legitimate noncommercial use or fair use of the Complainant’s trademarks. Moreover, the Respondent’s website fails to disclose the Respondent’s lack of affiliation with the Complainant. These facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second requirement under the Policy.
C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant’s trademarks, the registration of the disputed domain name is clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the moment of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owns trademarks in JORDAN and uses them extensively. The addition of the term “authentic” to the disputed domain name is, in this case, even likely to increase this finding. It suggests that the disputed domain name ostensibly leads to the Complainant’s official website or online sales platform. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the website linked to the disputed domain name is currently used as a platform offering, according to the Complainant, counterfeit copies of the Complainant’s products, and clearly displays the Complainant’s trademark across its top banner. Such use is clearly intended to divert consumers to the disputed domain name, where unauthorized products are advertised and sold. Moreover, according to evidence submitted by the Complainant, the Respondent has already been involved in previous domain name procedures where the panel found the disputed domain name registrations to be abusive. These elements lead the Panel to conclude that the Respondent is conducting opportunistic domain name squatting activities, using the disputed domain name in bad faith to take unfair advantage of the Complainant’s trademarks. The Panel therefore rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.
Finally, the Respondent fails to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under 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 <authenticjordansair.com> be transferred to the Complainant.
Deanna Wong Wai Man
Date: October 24, 2018