Nikegiftcard.com + 5 more domains

The timeline behind nikegiftcard.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Nike, Inc v. James Hughes Claim Number: FA0804001180672 PARTIES Complainant is Nike, Inc. (“Complainant”), represented by Wendy Chan, of Nike, Inc., Oregon, USA. Respondent is James Hughes (“Respondent”), California, USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <nikegiftcard.com>, <nikegiftcard.tv>, <nikegiftcard.org>, <nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info>. The <nikegiftcard.com> domain name was registered with Godaddy.com, Inc. The <nikegiftcard.tv>, <nikegiftcard.org>, <nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info> domain names were registered with Network Solutions, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Mark McCormick as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 23, 2008. On April 23, 2008, Godaddy.com, Inc., confirmed by e-mail to the National Arbitration Forum that the <nikegiftcard.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 April 23, 2008, Network Solutions, Inc., confirmed by e-mail to the National Arbitration Forum that the <nikegiftcard.tv>, <nikegiftcard.org>, <nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc., has verified that Respondent is bound by the Network Solutions, Inc., 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 April 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 1, 2008 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@nikegiftcard.com, postmaster@nikegiftcard.tv, postmaster@nikegiftcard.org, postmaster@nikegiftcard.net, postmaster@nikegiftcard.mobi and postmaster@nikegiftcard.info by e-mail. A Response was received late by hard copy and thus the Response was deemed deficient pursuant to ICANN Rule 5 because the hard copy was not received by the response deadline. On May 8, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant Nike alleges that it designs, manufactures and markets athletic footwear, apparel, and equipment. Nike asserts that it has used the mark NIKE in connection with the marketing of its services since approximately 1971. Nike holds federal trademark registrations for its mark. Nike contends that the disputed domain names <nikegiftcard.com>, <nikegiftcard.tv>, <nikegiftcard.org>, <nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info> consist of the NIKE mark in conjunction with additional generic terms. As a result, Nike contends consumers are likely to be confused and to believe that Respondent and his activities and websites are connected to or affiliated with Complainant in some way. Complainant contends that the disputed domain names are confusingly similar because they are identical in material part to Complainant’s NIKE mark. Complainant also contends that Respondent is not commonly known by the NIKE mark or the disputed domain names and thus has no rights or legitimate interests in them. Moreover, Complainant contends that Respondent registered and is using the disputed domain names in bad faith. Complainant contends that Respondent had knowledge of Nike’s trademark rights and necessarily had actual knowledge of those rights at the time he registered the disputed domain names. Complainant asserts that Respondent has not made legitimate use of the domain names but, instead, has offered them for sale. B. Respondent Respondent’s response is that he had already decided to transfer the disputed domain names to Complainant “and accept their offer to reimburse” his expenses. He asserts that Complainant failed to provide him with the documentation to complete the transfer. He contends that the domain name <nikegiftcard.com> was already in existence and purchased by him as an expired domain name at auction. He expressed interest in knowing whether Complainant sought transfer of the disputed domain name from the previous owner. When asked by the Panel to clarify his position concerning the domain names, Respondent responded as follows: I am in agreement to transfer of all 6 domain names provided that I am not responsible for any expenses associated with this arbitration, I am not responsible for any expenses involved with the transfers, and, I am reimbursed for any and all expenses, including domain auction fees, associated with the creation and acquisition of said domain names. FINDINGS Complainant has provided evidence of its registration of the NIKE mark and of its continuous use of the marks since approximately 1971. The disputed domain names fully incorporate Complainant’s NIKE mark with additional generic words and the generic top-level domains. Respondent does not assert that he has a right or legitimate interest in the disputed domain names, although he states that he purchased the disputed domain name <nikegiftcard.com> at a domain auction. Respondent has not responded to Complainant’s allegation that he registered and used the domain names in bad faith except to offer to transfer all six of the disputed domain names to Complainant provided that he is not responsible for any expenses associated with the arbitration, or for any expenses involved with the transfers and is reimbursed for any expenses, including domain auction fees, that he incurred in creation or acquisitioin of the domain names. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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. Preliminary Procedural Issues Respondent’s Response was deficient because he did not timely file a hard copy of his Response. The Panel concludes that this technical breach should be overlooked in order that the dispute can be decided on the merits. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003). Respondent expressed willingness to transfer the disputed domain names but set conditions on the transfer. This may be a sufficient basis for the Panel to forego traditional analysis and order the immediate transfer of the disputed domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). The problem here, however, is that Respondent’s offer is conditional. Because the offer is conditional, the Panel will address the merits of the Complaint under traditional analysis. Identical and/or Confusingly Similar Complainant has provided evidence of its registration of its NIKE mark in 1974 with the United States Patent and Trademark Office. The record also shows Complainant’s continuous use of the mark in marketing its services. Complainant has established its rights in the mark. Respondent did not respond to Complainant’s allegation that his use of the mark in the disputed domain names is confusingly similar. No doubt exists of the confusing similarity. The disputed domain names fully incorporate Complainant’s NIKE mark with additional generic words and generic top-level domains. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001). Rights or Legitimate Interests No evidence exists that Respondent is commonly known by the disputed domain names or that he has in fact made any legitimate use of them. No doubt exists under the record that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003). Registration and Use in Bad Faith Respondent’s conditional offer to transfer the disputed domain names to Complainant without any explanation or response concerning his registration and use of the disputed domain names gives credence to Complainant’s allegation that Respondent registered and holds the disputed domain names in bad faith. The Panel believes that Respondent registered the disputed domain names and acquired the <nikegiftcard.com> domain name in the hope of profiting from Complainant’s goodwill associated with its NIKE mark. Respondent thus registered and used the disputed domain names in bad faith within the meaning of Police ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003). DECISION Because Complainant established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <nikegiftcard.com>, <nikegiftcard.tv>, <nikegiftcard.org>, <nikegiftcard.net>, <nikegiftcard.mobi> and <nikegiftcard.info> domain names be TRANSFERRED from Respondent to Complainant. Mark McCormick, Panelist Dated: June 3, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.