WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nike Innovate C.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Duke Oh

Case No. D2018-1222

1. The Parties

The Complainant is Nike Innovate C.V. of Beaverton, Oregon, United States of America ("United States"), represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland (the "United Kingdom").

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Duke Oh of Yorba Linda, California, United States.

2. The Domain Name and Registrar

The disputed domain name <nikegiveaway.info> (the "Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 31, 2018. On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 5, 2018.

The Center verified that the Complaint together with the amended 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 formally notified the Respondent of the Complaint, and the proceedings commenced on June 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 28, 2018.

The Center appointed Lynda M. Braun as the sole panelist in this matter on July 3, 2018. 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, a subsidiary of Nike, Inc., is a leading manufacturer of sports shoes and sports apparel with a presence in more than 150 countries worldwide. The Complainant, through its authorized partners, operates online shopping sites and retail stores that sell products bearing the NIKE mark in many cities in the United States, Brazil, Germany, France, the United Kingdom, Italy, Spain, the Russian Federation, China, Japan, Republic of Korea, Thailand, Indonesia, Australia and Mexico. Based on the Complainant's long use, significant sales, billions of United States Dollars in revenue, and extensive advertising of products bearing the NIKE Mark, the Complainant is well-known throughout the world.

The Complainant is the owner of a significant portfolio of trademark registrations for NIKE, which trademark has been used and registered in hundreds of jurisdictions around world since 1971 (including United States Trademark No. 1214930, registered on November 2, 1982) (the "NIKE Mark").

The Respondent registered the Disputed Domain Name on April 24, 2018. The Disputed Domain Name redirects Internet users to various websites including to a webpage at "www.signup.sweepstakesshopping.com" entitled "Sweepstakes a month.com" that states: "Take your Chance to Win $1000 Nike Gift Card". Below the promotion is a place to enter and submit one's email address to become a winner. At the very bottom of the promotion is a line that says: "Congratulations to [Adam M. from Grantville, GA], our most recent $1,000.00 Winner." The name in orange changes each time one clicks on the Disputed Domain Name.

According to the Complainant's in-house security team, the site contains malware. According to the Complainant, when the site is accessed using anti-virus software and a web filter, the website redirects to "www.honiedfun.com", a movie and television streaming website. In an annex to the Complaint, the Complainant submitted screenshots of both websites.

5. Parties' Contentions

A. Complainant

The following are the Complainant's contentions:

- The Disputed Domain Name is confusingly similar to the Complainant's NIKE Mark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Respondent registered and is using the Disputed Domain Name in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the NIKE Mark based on longstanding use as well as its numerous trademark registrations for the NIKE Mark in jurisdictions throughout the world. The Disputed Domain Name consists of the NIKE Mark in its entirety along with the descriptive term "giveaway", followed by the generic Top-Level Domain ("gTLD") ".info". It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Finally, the addition of a gTLD such as ".info" in a domain name is a technically requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. The Panel concludes that the Disputed Domain Name is identical or confusingly similar to the NIKE Mark.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its NIKE Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.

Moreover, the Respondent's registration and use of the Disputed Domain Name to resolve to a website that disseminates malicious computer software or malware that could deceive Internet users and maliciously infect their computer systems is not a bona fide use of the Disputed Domain Name incorporating the NIKE Mark. SeeWikimedia Foundation, Inc. v. Walter Gerbert, WIPO Case No. D2016-1346.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.

First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant's Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first used the famous NIKE Mark.

The Complainant's continuous and public use of the NIKE Mark as well as the fame of the NIKE Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). This is especially true where, as here, the Complainant owns hundreds of trademarks around the world. The Respondent's registration and use of the Disputed Domain Name that is confusingly similar to the Complainant's well-known trademark suggests bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests bad faith).

Second, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's NIKE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. The descriptive term "giveaway" is associated with the idea that the Complainant is offering a promotion to Internet users. The Respondent's registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known NIKE Mark, by enticing visitors to expect that the Complainant was distributing a promotion. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy").

Third, by using the Disputed Domain Name, the Respondent has intentionally attempted to redirect Internet users to pages with malware or spyware by creating a likelihood of confusion with the Complainant's well‑known NIKE Mark. Such dissemination of malware is further evidence of bad faith. See Wikimedia Foundation, Inc. v. Walter Gerbert, supra.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

7. Decision

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 <nikegiveaway.info> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: July 4, 2018