Nike Innovate C.V. v. WhoisGuard Protected, WhoisGuard, Inc.

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Multinational Sports wear giant Nike filed Arbitration and Mediation Center under World Property Organization (WIPO). The center then sent the mail to the Registrar of the USPTO in connection with the Disputed Domain Name’s registrant contact and information. The center then confirmed that the complaint met the formal requirements of the Uniform Name Dispute Resolution Policy . The Center formally notified the Respondent of the Complaint on June 7, 2018, in line with the Rules, paragraphs 2 and 4, and the procedures started on June 7, 2018. The deadline for responses was June 27, 2018, as specified in paragraph 5 of the Rules. The Respondent did not respond in any way. As a result, on June 28, 2018, the Center notified the Respondent of his default. On July 3, 2018, the Center designated Lynda M. Braun as the lone panellist in this case. It was lawfully formed, according to the Panel. The Panel has filed the Statement of Acceptance and Declaration of Impartiality and Independence, as requested by the Center to guarantee that the Rules, paragraph 7

Facts of the case

The Complainant, a Nike, Inc. subsidiary, is a major sports shoe and clothing company with a presence in more than 150 countries across the world. The Complainant runs online shopping sites and retail locations in numerous cities across the United States, Brazil, Germany, France, the United Kingdom, Italy, Spain, the Russian Federation, China, Japan, Republic of Korea, Thailand, Indonesia, Australia, and Mexico through its authorized partners. Based on the Complainant’s widespread usage, large sales, billions of dollars in income, and intensive promotion of items carrying the NIKE Mark.

On May 31, 2018, the Complaint filed with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center (the “Center”). The Center sent an email to the Registrar on May 31, 2018, requesting registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar sent the Center an email with its verification answer, which revealed the Disputed Domain Name’s registrant and contact information, which differed from the listed Respondent and contact information in the Complaint. On June 4, 2018, the Center emailed the Complainant, giving the registrant and contact information given by the Registrar and requesting the Complainant to lodge an amended complaint

On April 24, 2018, the Respondent registered the Disputed Domain Name. The Disputed Domain Name leads Internet visitors to numerous websites, including “Sweepstakes a Month.com” at “www.signup.sweepstakesshopping.com,” which states: “Take your Chance to Win $1000 Nike Gift Card.” A spot to input and submit one’s email address is located underneath the promotion. “Congratulations to [Adam M. from Grantville, GA], our most recent $1,000.00 Winner,” states a statement at the bottom of the campaign. When you click on the Disputed Domain Name, the name in orange changes.

The site includes malware, according to the Complainant’s in-house security staff. When anti-virus software and a web filter are used to visit the site, it redirects to “www.honiedfun.com,” a movie and television streaming service, according to the Complainant. The Complainant included screenshots of both websites as an appendix to the Complaint.

Nike’s Contention
The Complainant’s arguments are as follows: – The Disputed Domain Name is confusingly close to the Complainant’s NIKE Mark. 

– In relation to the Disputed Domain Name, the Respondent has no rights or reasonable interests. 

– The Disputed Domain Name was registered and is being used in bad faith by the Respondent. 

In line with paragraph 4(i) of the Policy, the Complainant requests that the Respondent transfer the Disputed Domain Name to the Complainant.

Respondents Contention

The Respondent did not reply to the Complainant’s contentions

Analysis of the judgement

This aspect is divided into two parts: first, does the Complainant own a relevant trademark, and second, is the Disputed Domain Name identical or confusingly similar to that trademark? 

The Complainant has undisputedly established rights in the NIKE Mark as a result of its long-standing usage and multiple trademark registrations for the NIKE Mark in jurisdictions across the world. The Disputed Domain Name is made up of the full NIKE Mark, as well as the descriptive phrase “giveaway,” followed by the generic Top-Level Domain (“gTLD”) “.

 The Complainant has established a prima facie case, according to the Panel. To refute the Complainant’s prima facie case, the Respondent presented any arguments or evidence. The Complainant has furthermore not approved, licenced, or otherwise authorised the Respondent to use its NIKE Mark, and the Complainant has no commercial relationship with the Respondent. Finally, there is no clear relationship between the Respondent’s name and the Disputed Domain Name that would lead one to believe it is related to a brand or trade name in which the Respondent owns rights.

Furthermore, the Respondent’s registration and use of the Disputed Domain Name to redirect to a website that distributes malicious computer software or malware that may deceive Internet users and maliciously infect their computer systems is not a legitimate use of the Disputed Domain Name incorporating the NIKE Mark. According to paragraph 4(b) of the Policy, the Complainant has proved the existence of the Respondent’s bad faith based on the facts. 

First, bad faith can be established if the Respondent knew or should have known about the Complainant’s Mark’s registration and use before to registering the Disputed Domain Name. This is the case in this instance, where the Respondent registered the Disputed Domain Name many years after the Complainant first utilized the well-known NIKE Mark.

Second, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith in order 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 Respondent’s website’s source, sponsorship, affiliation, or endorsement. The word “giveaway” connotes that the Complainant is providing a promotional opportunity to Internet consumers

Third, by using the Disputed Domain Name to create a likelihood of confusion with the Complainant’s well-known NIKE Mark, the Respondent has sought to purposefully lead Internet users to sites containing malware or spyware. Malware distribution in this manner is more proof of bad faith.

For the aforementioned reasons, the Panel directs that the Disputed Domain Name nikegiveaway.info be transferred to the Complainant in line with paragraphs 4(i) of the Policy and 15 of the Rules.

By Saransh Srivastava

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