The Complainant is Nike, Inc. of Beaverton, Oregon, United States of America, represented by FairWinds Partners, LLC, United States of America.
The Respondent is Stocktrade Limited of Dublin, Ireland.
The disputed domain name <nike.ie> is registered with IE Domain Registry Limited ("IEDR").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 7, 2015 via email and on January 19, 2015 by courier. On January 7, 2015, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On the same day, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details. At the joint request of the parties, the proceeding was suspended on January 15, 2015 and reinstituted on January 22, 2015.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 23, 2015. In accordance with the Rules, paragraph 5.1, the due date for Response was February 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2015.
The Center appointed G. Brian Hutchinson as the sole panelist in this matter on February 27, 2015. 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.
4.1 The Complainant owns the NIKE trade mark which it uses extensively in its business in respect of a large range of goods; in its retail stores in a number of cities around the world; and in a variety of other ways and activities including sponsorship of major athletes and philanthropic activities in a number of countries. The NIKE trade mark was adopted in 1971 and has since been registered in over 150 countries and geographic regions around the world, including Ireland and the European Community. Three such registrations were exhibited in evidence in this proceeding as follows:
|
Mark |
Goods and Services |
Registration No. (Country) |
Registration Date |
|
NIKE |
Footwear in IC 25 (First Use in Commerce June 18, 1971) |
1214930 (US) |
November 2, 1982 (Filed November 2, 1982) |
|
NIKE |
Athletic and casual clothing for men, women and children-namely, shirts, pants, shorts, jackets, warm-up suits, headwear, socks in IC 25 (First Use In Commerce June 18, 1971) |
1277066 (US) |
May 8, 1984 (April 22, 1982) |
|
NIKE |
ICs. 9, 14, 18, 25, 28, 42 |
278028 (CTM) |
November 13, 2006 (Filed July 8,1996) |
4.2 Paragraph 1.3.1. of the Policy provides that "Trade and service marks protected in the island of Ireland" are protected identifiers for the purpose of paragraph 1.1.1. of the Policy. On examination of the registrations supplied the Panel finds that the Complainant satisfies the requirement of being the holder of a Protected Identifier as required by paragraph 1.1.1. of the Policy, being owner of the trade mark NIKE under various registrations including a Community Trade Mark registered more than four years prior to the registration of the disputed domain name.
4.3 The Complainant has supplied evidence, and inspection has confirmed, that the <nike.ie> domain name resolves to a changing series of web pages promoting variously Paddy Power Sport; the UBER ride sharing service; and the Respondent's own pay-per-click website featuring various links to both the Complainant's and other websites not associated with the NIKE mark, and most recently the "www.vodka.ie" website.
5.1 The Complainant contends that:
A. The <nike.ie> domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights (Policy, para. 1.1.1.; Rules, paras. 3.4.7, 3.4.8.1);
B. The Respondent has no rights in law or legitimate interests in respect of the disputed domain name (Policy, para. 1.1.2., Rules, para 3.4.8.2) and no evidence of rights in law or legitimate interests can be found (Policy, para. 3.1.), particularly given that the <nike.ie> domain name resolves to a changing series of web pages promoting variously Paddy Power Sport; the UBER ride sharing service; and the Respondent's own pay-per-click website featuring various links to both the Complainant's and other websites not associated with the NIKE mark;
C. The disputed domain name was registered or is subsequently being used in bad faith (Policy, paras. 1.1.3., 2.1.; Rules, para. 3.4.8.3); particularly given the fame of the NIKE mark and the fact that the Respondent is obtaining commercial gain from its use of the website at <nike.ie> to attract customers to a variety of sites including gambling, car sharing and pay-per-click advertising as described above;
and requests that the <nike.ie> domain name be transferred to the Complainant.
5.2 The Respondent failed to submit a response.
6.1 The <nike.ie> domain name is identical on the face of it to the Complainant's trade mark, disregarding the country code Top-Level Domain ("ccTLD") suffix ".ie". Prior Policy panels have found that when a domain name and trade mark are identical but for the ".ie" ccTLD, the "identical or misleadingly similar" element of the Policy is satisfied: Groupon Europe GmbH v. Digitalworx Limited, WIPO Case No. DIE2010-0004; Kaspersky Lab Zao v. Jan Zeleznak, WIPO Case No. DIE2010-0001; and Facebook Inc. v. Talkbeans Media Limited, WIPO Case No. DIE2007-0009. Any contrary interpretation would in the Panel's view defy the purpose of the Policy.
6.2 The Panel finds, therefore, that the Complainant has satisfied this element of the Policy and that the <nike.ie> domain name is identical to the Protected Identifier in which the Complainant has rights.
6.3. Paragraph 3.1.1. of the Policy lists as a factor which can be considered evidence of rights in law or legitimate interests: "Where the Registrant can demonstrate that, before being put on notice of the Complainant's interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business". Prior panels have found that leading consumers who are searching for a particular business to a pay-per-click site where nothing but links to the goods and services provided by others are listed is not a good faith offering or operation of a business: Adidas AG and Adidas (Ireland) Limited v. Gabor Varga and Jozsef Petho, WIPO Case No. DIE2006-0004; Telefonaktiebolaget L M Ericsson v. DNS Manager, Cenal.com / Moniker Privacy Services, WIPO Case No. D2011-0369.1 They have also found that using a well-known trade mark to redirect visitors to a third-party gambling site is not a good faith offering of goods or services: Merck Sharp & Dohme Corp., MSD Consumer Care, Inc., and their affiliates and subsidiaries v. Zhangzhonglin, WIPO Case No. D2013-1994; Bayerische Motoren Werke AG v. Winsco a/k/a dada dada, WIPO Case No. D2013-0750. And it has been held that good faith is more difficult to find where a famous trade mark is concerned: BGL Group Limited v. Blue Insurances, WIPO Case No. DIE2011-0004.
6.4 The Respondent failed to submit a response in this proceeding and has failed to demonstrate that as Registrant the Respondent made such good faith preparations or good faith offerings or operation. Given the Respondent's use of the disputed domain name to redirect visitors as described at paragraph 4.3 above, the Panel doubts that even if the Respondent had made a response it could have succeeded in demonstrating good faith because the Complainant's mark is so well known. Considering furthermore the weight of authority cited above, the Panel is satisfied that the Respondent's use of the disputed domain name was and is inconsistent with a good faith preparation and offering of goods or services or operation of a business.
6.5 The Respondent's name is listed in WhoIs as Stocktrade Limited which does not correspond to the disputed domain name, so neither can the Respondent avail itself of the protection under paragraph 3.1.2. of the Policy for personal names (including pseudonyms). The correspondence of the first two letters of each of the Respondent contact person's first name and surname (Niall Keaveney, as listed in the WhoIs) to the four letters spelling "nike" may be more than a coincidence but does not confer legitimate rights to the "nike" name per se to either him or the Respondent.
6.6 Furthermore, paragraph 3.1.3. of the Policy, which protects rights in relation to geographical indications, is of no bearing in these proceedings since the disputed domain name bears no relation to a geographical indication.
6.7 Accordingly, the Panel finds that the Complainant has satisfied this element of the Policy and that the Respondent has no rights or legitimate interests in the disputed domain name <nike.ie>.
6.8 It is inconceivable, given the fame and notoriety of the Complainant's NIKE mark that the Respondent could have registered the disputed domain name <nike.ie> without knowledge of the Complainant's rights in the mark; indeed it is difficult to conclude otherwise than that the Respondent registered the disputed domain name because of the Complainant's business and mark (see: Cath Kidston Limited v. Splurge Limited, WIPO Case No. DIE2010-0002), and indeed this is evidenced in part by the fact that after registration the Respondent's initial website included a link to the Complainant. The fact that the Respondent then used the disputed domain name to resolve to a number of third-party websites as described above can only lead to the conclusion that the Respondent "has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a protected identifier in which the Complainant has rights" in accordance with paragraph 2.1.4. of the Policy. The Respondent has apparently done so for commercial gain for itself or others, which prior panels have found also to constitute bad faith use, see: Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923; Adidas AG and Adidas (Ireland) Limited v. Gabor Varga and Jozsef Petho, supra; Alliance Bernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230; and Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211. The Panel notes that paragraph 2.1.4. of the Policy, unlike paragraph 4(b)(iv) of the UDRP, does not require that the actions of the respondent be for "commercial gain", but it is nonetheless and in any event persuaded by the authorities. The Panel is satisfied, therefore, that the <nike.ie> domain name was registered and is being used in bad faith under paragraph 2.1.4. of the Policy.
6.9 The Complainant further contends that by linking the <nike.ie> domain name to pay-per-click advertising or unrelated and uncontrolled third-party websites the Respondent has tarnished and diluted the NIKE mark under paragraph 2.1.5. of the Policy which provides that evidence of bad faith may be found "Where the domain name is used in a way that is likely to dilute the reputation of a trade or service mark in which the complainant has rights". In this respect, the Panel would require further evidence before making a finding of likely dilution, and, given the decision at 6.8 above there is no need for a finding to be made in that regard. The Panel does find, however, that by intentionally registering the <nike.ie> domain name the Respondent has prevented the Complainant from itself reflecting its mark in a ".ie" domain, contrary to paragraph 2.1.2. of the Policy.
6.10 Accordingly, the Panel finds that the Complainant has satisfied this element of the Policy and that the Respondent has registered or is using the <nike.ie> domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <nike.ie> be transferred to the Complainant.
G. Brian Hutchinson
Sole Panelist
Dated: March 17, 2015
1 As the Policy is similar in most respects to the Uniform Domain Name Dispute Resolution Policy ("UDRP"), save as noted below, the Panel refers to UDRP decisions where instructive.