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Generic Top Level Domain Name (gTLD) Decisions |
Nike, Inc. v. Kyung Ho Kim
Claim
Number: FA0411000366169
Complainant is Nike, Inc. (“Complainant”), represented
by Philip Davison, One Bowerman Drive, DF/4, Beaverton,
OR 97005. Respondent is Kyung Ho Kim (“Respondent”),
Seo 3-dong Geumjeong-gu, Busan 141-402, South Korea.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nikefree.com>, registered with Today
and Tomorrow Co. Ltd.
The
undersigned certifies that he or has acted independently and impartially and to
the best of his knowledge has no known conflict
in serving as Panelist in this
proceeding.
as Panelist.
Louis
E. Condon, as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
17, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 18, 2004.
On
November 22, 2004, Today and Tomorrow Co. Ltd. confirmed by e-mail to the
National Arbitration Forum that the domain name <nikefree.com> is
registered with Today and Tomorrow Co. Ltd. and that Respondent is the current
registrant of the name. Today and Tomorrow Co.
Ltd. has verified that
Respondent is bound by the Today and Tomorrow Co. Ltd. registration agreement
and has thereby agreed to resolve
domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
November 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 13, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing
contacts, and to postmaster@nikefree.com by e-mail.
An
e-mail response was received from the Respondent. However, it was deemed
deficient in that it was not received in hard copy format,
nor in accordance
with the Rules/Policy. A second submission of the same e-mail was subsequently
submitted. Both items were forwarded
to the Panel for consideration.
Accordingly, having received no proper Response from Respondent, using the same
contact details and
methods as were used for the Commencement Notification, the
National Arbitration Forum transmitted to the parties a Notification
of
Respondent Default. After reviewing the Respondent’s e-mails, which although
argumentative presented no defense, the Panel proceeded
to decide the matter as
a Default case.
On
December 16, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Louis E. Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules")
"to employ reasonably available
means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <nikefree.com>
domain name is confusingly similar to Complainant’s NIKE mark.
2. Respondent does not have any rights or
legitimate interests in the <nikefree.com> domain name.
3. Respondent registered and used the <nikefree.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant
designs, manufactures, and markets a broad range of athletic footwear, apparel,
and equipment. Complainant has continuously
used and promoted its NIKE mark in
connection with its products and services since 1971. Complainant has invested
millions of dollars
in advertising and promoting its NIKE mark and has sold
billions of dollars in merchandise under the mark. Complainant owns several
trademark registrations for the NIKE mark, including U.S. trademark Reg. Nos.
978,952, 1,153,938, 1,243,248, and 1,277,066 (issued
on February 19, 1974, May
12, 1981, June 21, 1983, and May 8, 1984, respectively), which are
incontestable in accordance with 15
U.S.C. §§ 1065 and 1115(b).
Respondent
registered the <nikefree.com> domain name on June 19, 2003. The
disputed domain name does not currently resolve to any website. Respondent is
not licensed
by Complainant to use the NIKE mark, any NIKE-based marks, or the
NIKEFREE mark for any purpose.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted
in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain
name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established that it has rights in the NIKE mark through registration with the
United States Patent and Trademark Office
and through continuous use of the
mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently
distinctive and have acquired secondary
meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201
(WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of validity,
which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden
of refuting this assumption).
The <nikefree.com>
domain name is confusingly similar to Complainant’s NIKE mark because it merely
adds the generic word “free” and the “.com” generic
top-level domain to
Complainant’s mark. First, the addition of a generic top-level domain does not
distinguish the disputed domain
name from Complainant’s mark. See Interstellar Starship Servs. Ltd. v. EPIX,
Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (finding <epix.com>
"is the same mark" as EPIX); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001)
(finding that the domain name <termquote.com> is identical to
Complainant’s TERMQUOTE
mark).
Furthermore,
Respondent’s addition of the generic word “free” does not eliminate the
confusing similarity between the disputed domain
name and Complainant’s NIKE
mark. Thus, the Panel finds that the <nikefree.com> domain name is
confusingly similar to Complainant’s NIKE mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant
combined with a
generic word or term); see also Am.
Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding
that the addition of the generic word “Net” to Complainant’s ICQ mark, makes
the <neticq.com>
domain name confusingly similar to Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶ 4(c)(i)-(iii).
Such a showing shifts Complainant’s burden to Respondent, who must come forward
with evidence rebutting
Complainant’s allegations in order to prevail on this
element. In this case, Complainant has made a prima facie showing that
Respondent
does not have any rights or legitimate interests in the disputed
domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (“[p]roving that the Respondent has
no rights or legitimate interests in respect of the [d]omain
[n]ame requires
the Complainant to prove a negative. For the purposes of this sub paragraph,
however, it is sufficient for the Complainant
to show a prima facie case and
the burden of proof is then shifted on to the shoulders of Respondent. In those
circumstances, the
common approach is for [R]espondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question”);
see also G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion
because this
information is “uniquely within the knowledge and control of the respondent”).
Since
Complainant has made a prima facie showing that Respondent does not have any
rights or legitimate interests in the disputed
domain name, the burden is
shifted to Respondent to demonstrate that it has rights or legitimate interests
in the domain name. In
this proceeding, Respondent has not submitted a
Response. Thus, Respondent has failed to present any circumstances under which
it
could substantiate rights or legitimate interests in the disputed domain
name. Furthermore, because Respondent has failed to submit
a Response in this
proceeding, the Panel may accept as true all reasonable allegations submitted
by Complainant in the Complaint.
See Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent
has no rights or legitimate interests in the domain name because Respondent
never submitted a response or provided the Panel with evidence to suggest
otherwise); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the
very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Respondent
registered the domain name over one year ago and is not using the disputed
domain name; as such, it cannot be said to be
making a bona fide offering of
goods or services, nor can it be said to be making a legitimate noncommercial
or fair use of the domain
name. In these circumstances, Policy ¶¶ 4(c)(i) and
(iii) are inapplicable to Respondent. See Vestel Elektronik Sanayi ve
Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“merely registering
the domain name is not sufficient to establish rights or legitimate interests
for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia &
Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where Respondent failed to submit a Response to the
Complaint
and had made no use of the domain name in question).
Furthermore, no
evidence in the record suggests that Respondent is commonly known by the <nikefree.com>
domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the
domain name in
question).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is not using the <nikefree.com> domain name for any purpose,
despite the fact that Respondent registered the disputed domain name more than
eighteen months ago.
Such passive holding equates to bad faith use and
registration under Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA
96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(a)(iii) even though Respondent has not used the domain
name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will
create the confusion described in the Policy”);
see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital,
D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use
of the domain name in question and there are no
other indications that
Respondent could have registered and used the domain name in question for any
non-infringing purpose).
Furthermore,
Respondent’s registration of the disputed domain name, which incorporates
Complainant’s well-known NIKE mark while adding
the generic word “free,”
suggests that Respondent knew of Complainant’s rights in the NIKE mark.
Additionally, Complainant’s trademark
registrations on file at the United
States Patent and Trademark Office gave Respondent constructive notice of
Complainant’s mark.
Therefore, the Panel finds that Respondent chose the
disputed domain name based on the distinctive and well-known qualities of
Complainant’s
mark, which evidences bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly
known mark at the time of registration); see also Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status
that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given
the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <nikefree.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
December 27, 2004
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