WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike Innovate C.V. v. beats
Case No. D2021-3824
1. The Parties
The Complainant is Nike Innovate C.V., United States of America, represented by Stobbs, United Kingdom.
The Respondent is beats, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <nikeland.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On the same date, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2021, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 9, 2021, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the registration agreement for the disputed domain name is Korean. In the same notification, the Center requested the Complainant to provide, by December 12, 2021:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) … the Complaint translated into Korean; or ….
3) … a request for English to be the language of the administrative proceedings.”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by December 14, 2021.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [December 14, 2021], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On December 9, 2021, the Complainant responded to the Center, reiterating 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, again both in English and Korean, formally notified the Respondent of the Complaint, and the proceeding commenced on December 15, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was January 4, 2022. The Respondent did not submit any response. Accordingly, on January 11, 2022, the Center notified the Respondent’s default.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on January 26, 2022. 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, along with its parent corporation, Nike, Inc. and affiliated companies and subsidiaries, identifies itself as “the world’s leading manufacturer of sports shoes and sports apparel”. The Complainant has obtained registrations of a large number of marks for NIKE in several countries, including the Republic of Korea (among others, registration no. 4010704910000, registered on November 18, 2014). The Complainant is also the owner of various domain names containing “nike”, including <nike.com> (registered on March 4, 1995) and <nikeair.com> (registered on December 1, 1995).
The Respondent registered the disputed domain name <nikeland.com> on July 29, 2008.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (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. In addition, the Complaint states, inter alia:
“The Complainant has a significant reputation and has built up a vast amount of goodwill in the NIKE brand worldwide in relation to a wide range of goods and services.”
“The Complainant, including through its authorised partners, operates retail stores and sells products under the NIKE brand in many cities, including but not limited to: [thirty-eight cities in eighteen countries, including Seoul, Republic of Korea].”
“The Complainant’s NIKE brand is among the most widely recognized brands in the world.”
“The Complainant’s NIKE brand is widely regarded and consistently ranked as one of the ‘coolest’ and most popular apparel and lifestyle brands among consumers internationally.”
“Every year large sums of money are spent in advertising the products sold under the NIKE brand.”
“In view of the worldwide recognition of the Complainant’s NIKE brand, and the colossal scope of the Complainant’s business, there is no plausible reason that the Respondent could have for registering the Disputed Domain Name.”
The Respondent did not reply to the Complainant’s contentions. Under paragraphs 5(f) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. Paragraph 14(b) allows the Panel to draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
The Panel must first address the language of the proceeding.
Paragraph 11(a) of the Rules provides that the language of the registration agreement shall be the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. This provision also states that the determination of the proper language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, although the language of the registration agreement is Korean, the Complainant requests that English be the language of the proceeding.
After receiving the Complaint in English, the Center notified the Parties, in both English and Korean, of the Center’s procedural rules regarding the language of the proceeding. The Complainant asserts, in part, that a proceeding in Korean would unfairly disadvantage and burden the Complainant, and lead to undue delay and substantial expenses. The Center informed the Respondent that it may object timely to a proceeding conducted in English. The Respondent did not respond to the Center’s notification, and has defaulted. Under these circumstances, the Panel decides that English is the language of this proceeding.
Turning to the merits, the Complainant must satisfy each of the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <nikeland.com> is identical or confusingly similar to a mark in which the Complainant has rights (“NIKE”), under paragraph 4(a)(i) of the Policy. The Complainant’s mark appears prominently in the disputed domain name. The addition of the “land” term does not prevent a finding of confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Top Level Domain “.com”, a technical registration requirement, is disregarded for this discussion. WIPO Overview 3.0, section 1.11.1.
The first element is demonstrated.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
The Respondent has declined to submit any response. Ultimately, the Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in the Policy, or otherwise.
The second element is satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that can satisfy this element.
The disputed domain name <nikeland.com> resolves to an inactive site. The Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith. WIPO Overview 3.0, section 3.3. Among the relevant factors in this analysis are: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, … and (iv) the implausibility of any good faith use to which the domain name may be put.” Id. Here, the Complainant’s distinctive mark is globally known, and it is difficult to imagine that the Respondent was not aware of it before registering a domain name beginning with “nike”. The Respondent had an opportunity to explain its good faith intentions, but instead defaulted. The Panel determines that the requisite bad faith element is present here.
The third element is also demonstrated.
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 <nikeland.com> be transferred to the Complainant.
Date: February 7, 2022