NIKE, Inc., v. John Sanders

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Nike, Inc.

v. John Sanders

Case No.

D2002-0390

1. The Parties

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.

2. Domain Name and Registrar

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.

3. Procedural History

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.

4. Factual Background

The Trademark

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.

5. Parties’ Contentions

Complainant

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.

a. Confusing Similarity

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.

b. Respondent has no

rights or legitimate interest in the domain name

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.

c. Respondent’s Bad

Faith

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.

b) Respondent

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)).

6. Discussion and Findings

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.

a. Preliminary Observations

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.

b. Identical or Confusing

Similarity

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.

c. Rights or Legitimate

Interests

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.

d. Registration and

Use in Bad Faith

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