WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike Innovate C.V. v. Lyndon Carter
Case No. D2020-3540
1. The Parties
Complainant is Nike Innovate C.V., United States of America (the “United States”), represented by Stobbs IP Limited, United Kingdom.
Respondent is Lyndon Carter, United States.
2. The Domain Name and Registrar
The disputed domain name <michaeljordanlegacy.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2020. On December 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 4, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 8, 2021.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. Respondent sent several email communications. Accordingly, the Center notified the commencement of panel appointment process on February 8, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 15, 2021. 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
Complainant owns the trademark rights to MICHAEL JORDAN, the name of perhaps one of the greatest professional basketball players in history. Because of his prowess as a scorer, passer, and defender, Michael Jordan set many records in the National Basketball Association (“NBA”), and his team, the Chicago Bulls, won six NBA championships between 1991 and 1998.
Complainant is one of the world’s leading producers of athletic shoes, sports gear, sports equipment, and related merchandise. Since the 1980s, one of Complainant’s most prominent brands has been MICHAEL JORDAN, who has helped make the NIKE footwear brand even more famous than it had been. Complainant holds numerous trademark registrations for JORDAN and MICHAEL JORDAN in jurisdictions throughout the world.
The Domain Name was registered on October 4, 2020. The Domain Name is redirected to Complainant’s website at “www.nike.com/gb/jordan”, which is the site at which Complainant features its MICHAEL JORDAN products.
On November 10, 2020, Respondent sent Complainant the following email:
“We now own the domain name, MichaelJordanLegacy.com.
Would Nike like to re-capture the moniker?
We’re offering it to you, outright, for $50,000 USD.
Nike has owned this web asset since 1998(just before MJ’s retirement), however, web admins failed to renew it back in July.
We want to get it back in their hands. And so, to prevent the rise of attention to web and Jordan enthusiasts, we’ve forwarded MichaelJordanLegacy to Jordan(dot)com for your convenience. See attached photo.
Please inform the goat of this notice.
We’re certain he’d like to preserve the moniker.
Don’t hesitate to contact me with any questions you may have. I am available to you.
First-right-of-refusal is on you.
Btw, Happy Monday!”
(The reference to “goat” presumably is an acronym for “Greatest Of All Time.”)
In a January 8, 2021 email to the Center, Respondent stated:
“I purchased MichaelJordanlegacy.com just a few months ago on godaddy.com. I have every right to own the name. The original letter sent to Nike executives illustrates this. Not to mention, Nike’s negligence makes for a great news story. I am willing to negotiate a fair and reasonable price for the domain name! I look forward to hearing back from you! And anyone associated with this complaint. Thank you and have a good day. If you would like to personally reach out to me my direct number is at the very bottom.”
In a January 19, 2021 email to the Center, Respondent reiterated his right to own the Domain Name and denied any intent to use it as a trademark.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not formally reply to Complainant’s contentions, apart from his comments as set forth above.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark MICHAEL JORDAN through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark, which is clearly recognizable within the Domain Name. The addition of the dictionary word “legacy” to the distinctive MICHAEL JORDAN does not reduce the confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. The undisputed evidence of record shows that Respondent registered the Domain Name in order to sell it to Complainant at a hefty profit. That motive certainly does not vest Respondent with any rights or legitimate interests vis-à-vis the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds that Respondent targeted Complainant’s famous MICHAEL JORDAN trademark when registering the Domain Name. The undisputed record, including the unsolicited November 10, 2020 email from Respondent to Complainant, makes it clear that Respondent’s primary (if not sole) motive here was to sell the Domain Name back to Complainant at a steep profit. That is bad faith registration and use within the meaning of the above-quoted Policy paragraph 4(b)(i).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <michaeljordanlegacy.com> be transferred to Complainant.
Robert A. Badgley
Date: February 22, 2021