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Nike, Inc. v. John Sanders [2002] GENDND 952 (25 June 2002)

WIPO Arbitration and Mediation Center

The Complainant is Nike, Inc., an Oregon corporation, with its principal place of business at One Bowerman Drive, Beaverton, OR 97005, United States of America. Complainant is represented by Dorothy C. Alevizatos, Trademarks and Intellectual Property, Nike, Inc.

The Respondent is John Sanders whose address in the records of the Registrar, Network Solutions, Inc., is shown as 44 Beumont Crescent, Brackley, Northants NN13 6AR, United Kingdom.

The domain name in issue is <just-do-it.org>.

The registrar is Network Solutions, Inc. 505 Huntmar Park Drive, Hendon, VA 20170, United States of America.

The WIPO Arbitration and Mediation Center ("the Center") received Nike, Inc.’s Complaint via email on April 26, 2002 and in hard copy on April 29, 2002. The Center transmitted an Acknowledgement of Receipt of Complaint to the Complainant and to the Respondent on April 29, 2002.

On April 29, 2002, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case. On May 1, 2002, Network Solutions, Inc. transmitted via email to the Center, its confirmation that (1) John Sanders is the registrant of the domain name in issue, and (2) the Policy applies to the domain name. Network Solutions, Inc. advised that the registrant’s address shown in their records is 44 Beumont Crescent, Brackley, Northants NN13 6AR, United Kingdom and that the administrative contact is shown as John Sanders, 44 Beumont Crescent, Brackley, Northants NN13 6AR, United Kingdom. Respondent’s technical contact is Namesecure (NAM2-ORG), P.O. Box 785, Herndon, VA 20172, United States of America.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Nike, Inc. made the required payment to the Center.

On May 7, 2002, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent and to Respondent’s Technical Contact via email, fax and via post/courier to the addresses provided by the Registrar, Network Solutions, Inc. In the Notification, the Center advised that the response was due by May 27, 2002, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response was not sent by May 27, 2002, including inter alia that an Administrative Panel would be appointed to review the facts and decide the case, and the Panel may draw appropriate inferences in the event of default.

The Center was unable to contact the Respondent by e-mail or fax at the fax numbers or e-mail address of the Administrative or Technical Contacts. Fed Ex delivered the hard copy of the Complaint to the Administrative Contact where Fed Ex was informed the address of the Administrative Contact was incorrect.

On May 28, 2002, the Center transmitted via email to the Respondent a Notification of Respondent Default.

On June 19, 2002, the Center advised the parties via email of the appointment of Ross Carson as the Sole Panelist, and advised that the decision was due July 3, 2002. The Center also forwarded the Case File to the Panelist by email and courier on June 19, 2002.

Complainant advises that Complainant Nike is the world's leading sports and fitness company. Since 1971, Nike has designed, manufactured and marketed a broad range of footwear, apparel and equipment.

Complainant owns numerous trademark registrations worldwide for its well known "JUST DO IT." trademark, including United States Registration Nos. 1,875,307, 1,931,937, and 1,817,919, as well as Australian Registration No. A578679, Canadian Registration No. TMA 477,741 and European Union Registration No. 000 514 984 for use in connection with a broad range of goods and services. Copies of these registrations are attached to the Complaint as Annex C.

Complainant submits that it has used and promoted its "JUST DO IT." trademark worldwide since 1992 in connection with footwear, apparel, equipment, retail store services, web-based communication, informational services, and other related goods and services.

Complainant avers that all three elements of Policy, Paragraph 4.(a) are met because:

1. the domain name in issue is identical or confusingly similar to a trademark and service mark in which Complainant has rights;

2. the Respondent has no rights or legitimate interests in the domain name; and

3. the domain name was registered and is being used in bad faith by respondent.

Complainant states that on July 16, 1999 Respondent registered the domain name just-do-it.org. Respondent attempted to distinguish his domain name by placing hyphens between each item. Complainant submits that punctuation in this manner does nothing to minimize the similarity between the domain name and Complainant's trademark. Complainant cites Nike, Inc. v. Ben deBoer, WIPO Case No. D2000-1397 (concerning <nike-shoes.com>), Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167 (concerning <e-nike.com and> <enike.com>) and Nike, Inc. v. Paul Verschoor, WIPO Case No. D2000-1707 (concerning <nike-soccer.com>, <nike-soccer.net> and <nike-soccer.org>).

Complainant submits that due to the similarity, individuals confronting Respondent's domain name are likely to be confused and to believe that Respondent, its activities and/or its web site are connected or affiliated with, sponsored or endorsed by, or emanate from Complainant.

Complainant submits that Respondent has no rights or legitimate interests in the designation JUST DO IT. Complainant states that Respondent has never been commonly known by the domain name and has never used any trademark or service mark similar thereto by which it or its business may have come to be known. Complainant submits that its trademark is recognized worldwide and Complainant has been careful to prevent conflicting uses of its trademark from emerging. Few, if any, individuals worldwide have any legitimate interest in any commercial designation containing Complainant’s JUST DO IT trademark. Complainant submits that this further reduces the likelihood that Respondent has any interest in the JUST DO IT designation.

Complainant submits that it is more likely that Respondent is only one of many "cybersquatters" seeking to profit from Complainant’s world famous trademark. Complainant cites Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167 (concerning <e-nike.com and> <enike.com>) and Nike, Inc. v. Granger & Associates WIPO Case No. D2000-0108 (concerning <niketown.com>).

Complainant submits that Respondent has not responded to Complainant’s attempts to contact Respondent at his known addresses. Complainant attaches to the Complainant as Annex D a copy of a letter dated January 8, 2002 from the Complainant to the Respondent placing Respondent on notice of alleged ongoing trade mark infringement and dilution of Complainant’s trademark, and seeking transfer of the domain name <just-do-it.org> from Respondent to Complainant. Complainant offered to reimburse Respondent for his out-of-pocket costs in registering the domain name. Respondent never responded to the letter.

Complainant submits that Respondent has registered and used the domain name in issue in bad faith since Respondent knew at the time of the fame and Complainant's ownership of the trademark JUST DO IT. Complainant submits that Respondent could foresee that people would assume the <just-do-it.org> domain name to be connected with Complainant and would seek out this site in the hope of finding Complainant’s site. Respondent could foresee that Complainant would wish to own and use the domain name.

Complainant further submits that Respondent’s use and registration of <just-do-it.org> has prevented Complainant from using its own world-famous trademark in this domain name. Complainant submits that this conduct of Respondent constitutes bad faith registration and use of the domain name.

Respondent failed to file a Response by the required deadline. In light of Respondent’s failure to respond, the Panel has elected to decide this dispute based upon the Complaint. (Rules, Paragraphs 5.(e) and 14.(a)).

Paragraph 4.(a) of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to a 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.

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4.(a)(iii) above, if proved by a complainant, shall be evidence of a respondent’s registration and use of a domain name in bad faith.

Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.

The Panel has assured itself that the parties have been treated with equality and respondent has been given a fair opportunity to present its case. (Rules, Paragraph 10.(b)) Accordingly, in the Panel’s view, respondent has been afforded due process.

Complainant has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy. It is especially important in a default situation that a Complainant meets its burden of proof.

Complainant contends that its mark and Respondent’s domain name are identical.

There is no question from this record that Complainant has rights in the mark on which it relies. The disputed domain name <just-do-it.org> is confusingly similar to Complainant’s trademark JUST DO IT.

The Panel finds that the domain name in dispute and the Complainant’s trademark are confusingly similar.

Complainant has demonstrated registration and use of the trademark JUST DO IT with respect to footwear, clothing, sports clothing, sports bags, handbags and travel bags and certain services. The mark has been in continuous use since at least as early as 1989. The Complainant has established by reference to a survey that the trademark JUST DO IT distinguishes the Complainant’s goods to a substantial portion of the public in the United States of America. The Complainant states that its trademark is famous and the Respondent has not made any statement to the contrary.

The Complainant states that Respondent has never used any trademark or service mark similar to JUST DO IT in relation to goods or services. The Respondent did not file a Response to dispute the fact that the Respondent has not used any trademark or service mark similar to JUST DO IT in relation to goods or services

The Complainant’s trademarks and service mark JUST DO IT are very well known and this is particularly so with respect to consumers of sports footwear and clothing over the past ten years. The Respondent has not filed a Response to show a right or legitimate interest in JUST DO IT. On a balance of probabilities and taking into account that the Respondent has not taken advantage of an opportunity to file proof of rights and a legitimate interest in <just-do-it.org>, I find that the Complaint has established that the Respondent has no rights or legitimate interests in the domain name.

The third matter which the Complainant must prove is that the domain name has been registered and is used in bad faith.

At the date of registration the trademark JUST DO IT was a very well-known trademark and on a balance of probabilities the Respondent knew of the trademark and Respondent could foresee that people would assume that the <just-do-it.org> domain name was associated with the Complainant.

The Respondent has been passively holding the domain name in dispute <just-do-it.org> since its registration on July 16, 1999. The Complainant forwarded a letter to the Respondent at 44 Beument Crescent, Brackley, Northants NN13 6AR, U.K. on January 8, 2002. The letter was sent via Federal Express. The Complainant offered to purchase the domain name in dispute from the Respondent. The Complainant advised the Respondent that the Complainant will reimburse the Respondent for reasonable and documented out-of-pocket costs directly related to obtaining the domain name. No response was made by the Respondent. The Respondent when served with the Complaint by fax and e-mail did not respond to the Complaint.

Paragraph 4 of the UDRP Policy identifies, without limitations, circumstances that "shall be evidence of the registration and use of a domain name in bad faith", for the purposes of paragraph 4(a)(iii). As stated in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 only one of these circumstances (paragraph 4(b)(iv), by necessity involves a positive action post-registration undertaken in relation to the domain name (using the name to attract custom to a web site or other on-line location. The Panel in Telstra posed the question "… what circumstances of inaction (passive holding) other than those identified in paragraph 4(b)(i)(ii) and (iii) can constitute a domain name being used in bad faith." A remedy can be obtained under the Uniform Policy only if those circumstances of the Respondent's passive holding amounts to acting in bad faith.

The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name amounts to the Respondent acting in bad faith. The particular circumstances of this case that lead to the conclusion that the passive holding of the domain name is in bad faith are:

(1) The Complainant's trademark is registered in many countries in the world and is well known as distinguishing goods and services emanating from the Complainant.

(2) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name in dispute.

(3) The Respondent has provided and failed to correct incorrect contact details, in breach of the registration agreement.

(4) The Respondent has passively held the domain name <just-do-it.org> for over two and one half years.

Taking into account the above facts the Panel finds that the Respondent's passive holding of the domain name in this particular case satisfies the requirements of paragraph 4(a)(iii) that the domain name was registered and "is being used in bad faith" by the Respondent.

The Panel finds that the Respondent registered and is using the domain name in dispute in bad faith.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights.

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) The Respondent’s domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <just-do-it.org> be transferred to the Complainant.

Ross Carson
Sole Panelist

Dated: June 25, 2002