WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nike, Inc. v. Circle Group Internet, Inc.
Case No. D2002-0544
1. The Parties
The Complainant in this administrative proceeding is Nike, Inc. an Oregon (U.S.) corporation, with principal place of business in Beaverton, Oregon. United States of America.
The Respondents in this administrative proceeding is Circle Group Internet, Inc. ("CGI"), an Illinois (U.S.) corporation, with an address in Mundelein, IL 60060, United States of America.
2. The Domain Name and Registrar
The domain name at issue is which is registered with Network Solutions, Inc., in Herndon, Virginia , United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on June 13, 2002, and in hardcopy on June 19, 2002.
On June 21, 2002, the Center determined that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules").
A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was transmitted to the Respondent on June 21, 2002. At that time, the Center notified the Respondent of the commencement of this administrative proceeding and set a deadline for the Response. The Response was timely received by the Center on July 10 (email), 11(fax) and 15 (hardcopy) 2002.
The Administrative Panel was informed of the Center�s receipt of a supplemental filing by Respondent, an "Addendum To Response Section B: Legitimate Interest," and was given sole discretion to determine whether to admit and consider the supplemental filing in rendering its decision. On August 26, 2002, the Panel issued an order advising the parties that it would consider Respondent's supplemental filing and allowing Complainant to provide comments, if any, limited to comment on Respondent's supplemental filing by August 31, 2002.
Complainant provided a response to Respondent�s Addendum, dated August 30, 2002, which was transmitted by Center to and received by the Panel on September 2, 2002.
4. Factual Background
Complainant Nike is a leading sports and fitness company. Since 1971, Nike has designed, manufactured and marketed a broad range of footwear, apparel and equipment.
Since 1992, Complainant has used and promoted its JUST DO IT. trademark worldwide in connection with footwear, apparel, equipment, retail store services, web-based communication, informational services, and other related goods and services. Complainant represents that its JUST DO IT. trademark is now widely recognized as indicating goods and services emanating from Complainant, and has become one of the world's most famous trademarks.
Complainant owns trademark registrations for JUST DO IT. trademark in the United States, Australia, Canadian and the European Union for use in connection with a broad range of goods and services.
Respondent CGI was founded in 1994. It is a source for funding and consulting for technology companies.
On February 20, 1997, Respondent registered the , and claims to have consistently used it since that time, first as an address for its website and since 1999 as a redirect to its websites , , and .
5. Parties� Contentions
A. Complainant
Complainant alleges that is identical to Complainant's registered JUST DO IT. trademark. Due to this 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 also asserts that its JUST DO IT. trademark is famous and that Respondent has no discernable legitimate interest in the identical domain name. Complainant points out that it does not appear that Respondent has ever been commonly known by the domain name, and that Respondent has never used any similar trademark, service mark or trade name.
Complainant argues that because of the asserted fame of its JUST DO IT. trademark, at most only a very few users of the mark could have a legitimate interest in the name, further reducing the likelihood that Respondent has any such interest in .
Complainant likens Respondent to the "cybersquatters" seeking to profit from Complainant's world famous trademark. Citing, WIPO Case No. D2000-0167 (transferring to Complainant and ) and WIPO Case No. D2000-0108 (transferring to Complainant ).
Complainant alleges that on January 8, 2002, it sent a letter to Respondent placing Respondent on notice of the alleged trademark infringement and dilution of Complainant's trademark, and that Respondent refused Complainant's certified letter.
Complainant also alleges that Respondent registered the domain name in bad faith, since it must have known at the time of the asserted fame and Complainant's ownership of the JUST DO IT. trademark, and since Respondent appears never to have had any legitimate interest in the name. Finally, Complainant argues that Respondent's use and registration of has prevented Complainant from using its trademark in connection with this domain name.
B. Respondent
Respondent generally challenges Complainant�s showing, asserting that it is insufficient to establish a claim under the Policy. In particular, Respondent points out that it is not engaged in any of the fields of use claimed in Complainant�s trademark registrations and that it allegedly uses in connection with the bona fide offering of goods and services in that the address re-directs to its website, currently . Respondent also asserts that it uses for unspecified "e-mail usage."
Respondent denies receiving the January 8, 2002 letter, which it alleges was sent to an outdated address.
Although Respondent does not explain why it selected the domain name , it strenuously argues that Complainant has failed to establish that it registered or used the domain name in bad faith. Respondent points out (and Complainant does not dispute) that although Complainant owns the domain names and , they are not being used.
Respondent argues that at all times since it registered it has been used first as its main web page and since 1999 as a redirect to its web page, which could not have caused any confusion with Complainant as the web page has at all times clearly identified Respondent and its services.
6. Discussion and Findings
This is a very close case. The Panel has allowed and considered supplemental filings by both parties to ensure a full opportunity to present evidence. As we apply the applicable rules to the evidence presented we are mindful that Complainant bears the burden of proof and that it has been some five years since the Respondent obtained the registration and started using it. We are also mindful that the Policy is designed for application to cases of abusive registration and use of trademarks to provide a quick and simple solution to cyber squatting.
Panelist Christie does not join in section 6.B of the Decision. His separate Dissenting Opinion is attached.
The Panel Majority applies the Policy and the Rules to the circumstances presented as follows:
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules sets out the principles this Panel is to use in rendering its decision: "A Panelist shall 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 directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the Respondent has no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
B. Application of Paragraph 4(a) to the Facts
I. Identical or Confusingly Similar to Trademark or Service Mark.
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has established its trademark rights arising from its multiple registrations and use of "JUST DO IT." Respondent does not contest the existence of Complainant�s trademark rights or that the domain name in issue is identical to the trademark (stripped of the TLD).
II. Respondent�s Rights and Legitimate Interests in the Domain Name.
The Panel considered Respondent�s Addendum to Response Section B: Legitimate Interest, and allowed Complainant to comment on the Addendum limited to that issue. Although such supplemental materials are generally to be discouraged, the Panel elected to allow them here as they are addressed to what we consider to be the crucial issue in this case, the presence or absence of a legitimate interest and, most importantly, the closely related issue of bad faith.
Complainant, which has the burden of proof, essentially relies on a presumption�that Respondent must have known of Complainant�s rights in "JUST DO IT" and would not have adopted that name by accident. Therefore, Complainant reasons, its use cannot be legitimate.
Respondent counters that:
Dating from April 17, 2002 until the present, has functioned as a re-direct to , as that is CGI�s trading symbol on the Over the Counter Bulletin Board ("OTCBB"). (See Attached Exhibit "J"). Prior to that and dating back until May of 2000, served as a re-direct to , since "crgp" was CGI�s original proposed trading symbol. (See Attached Exhibit "K"). Before that and dating back to February of 1999, was utilized as a re-direct to . (at 1)
Before 1999, Respondent asserts that the domain name was used as its "main web page, highlighting the bona fide offering of funding, consulting, and media offered services." Respondent asserts, and based on the submission we have no reason to disbelieve, that at all times its web site was used to describe Respondent�s services and related information, and that it could not reasonably be confused with Complainant�s lines of business. There is no proof, however, of any of the nonexclusive examples of paragraph 4(c) of the Policy that demonstrate a registrant�s rights or legitimate interests in the name.
Perhaps more telling, however, is what Respondent does not say: there is no explanation for why it selected "" in the first place. Nowhere in the response or the addendum does Respondent deny that (1) at the time of the registration it knew that complainant had trademark rights in "JUST DO IT." and (2) the redirect exploits the notoriety of Complainant�s trademark. If it had been shown that there was any other plausible reason for selecting this particular domain name, we were prepared to rule that Complainant had failed its burden of moving that Respondent has no legitimate interest.
The Panel believes that that the proof presented on the legitimate interest issue is inconclusive. On the one hand, we are troubled by Respondent�s argument that using another�s trademark as an automatic redirect to an unrelated website without any explanation for choosing that mark as the domain name establishes a "legitimate interest." On the other hand, Complainant has offered insufficient proof to justify a finding in its favor. As we find below that Complainant has not established the requisite bad faith registration, under the circumstances the Panel need not make a determination as to whether the evidence supports a finding of no legitimate interest.
III. Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must show that the domain name both has been registered and is being used in bad faith.
As noted, Complainant has made a strong showing of the strength of its trademark and argues that Respondent must have been aware of the mark at the time of the registration. Respondent does not directly address the accuracy of that accusation, and instead argues that "even these asserted actions do not amount" to bad faith. It faults Complainant for not producing concrete evidence of bad faith, such as an intent to sell the name.
For the reasons explained above, the Panel is suspicious of Respondent�s claim that use of the domain name merely as a redirect to its website is a bona fide offering of goods and services. The redirect adds nothing to the bona fides of the website. It merely diverts users who happen to type to an undoubtedly unexpected though apparently non-confusing destination. According to Respondent, it has admittedly been using solely in this fashion since February 1999. Before that time, Respondent asserts and Complainant does not deny, that was used as Respondent�s main web page.
The admitted current use solely as a redirect could potentially qualify as "bad faith" use. As noted, however, Complainant must show both bad faith use and registration. The use as a redirect began in 1999. Before then the only evidence in the record is that Respondent used to highlight its offering of the services on as its main web page. Presumably, as there is no proof to the contrary, Respondent�s purpose in obtaining the in 1997 was to use it as its main web page. As the only proof of the content of this "main web page" is Respondent�s assertion that it highlighted its "funding, consulting and media offered services," there is insufficient proof of a "bad faith" registration.
The Panel is cognizant of the fact that evidence of a bad faith intent at the time of registration can generally be shown only inferentially, and that rarely will a respondent (even a culpable one) acknowledge an intent to trade on the good will of the owner of the mark. The ability to find proof in this situation is perhaps made more difficult because more than 5 years have passed since the registration in February 1997. But this is a result at least partly of Complainant�s own making.
Respondent has shown that Complainant registered in 1994 and has recently acquired ownership of , all the while Respondent was using . Yet, Complainant took no action against Respondent until this proceeding, or at the earliest January 2002 when it tried to send a letter to Respondent, a full two years after the UDRP procedure became available. During that same period, Respondent made no effort to hide or conceal its longstanding use of . To the extent that Complainant�s task in proving bad faith registration has been made more difficult with the passage of time, it has itself to blame. We need not decide whether some defense akin to the common law concept of "laches" should apply to UDRP proceedings; suffice it to rule here that Complainant has failed to establish Respondent�s "bad faith" at the time of registration in 1997.
7. Decision
The Panel Majority finds that Complainant has not shown that the domain name was registered in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel declines to direct the Registrar to transfer the disputed domain name to the Complainant.
Roderick M. Thompson
Presiding Panelist
G. Gervaise Davis III
Panelist
Dated: September 10, 2002
Dissenting Opinion
I agree with much of the majority�s discussion, but I disagree with their reasoning and ultimate findings on the issues of Respondent�s legitimate interest in the domain name and Respondent�s registration and use of the domain name in bad faith.
I believe Complainant has discharged its burden of proof in relation to the requirement of paragraph 4(a)(ii). Complainant�s mark is strong, and the domain name is identical to it. Not only has Respondent not given a plausible reason for registering Complainant�s trademark as its domain name, but also Respondent has not given any reason for doing so; and none is self evident. The particular use to which Respondent subsequently put the domain name (as a URL and later a redirect to its website offering funding, consulting, and media services) is not such as to give rise to a legitimate interest in the domain name, since the domain name does not seem related in any way to the activities of Respondent or the contents of its website. Accordingly, I find that Respondent does not have a legitimate interest in the domain name.
I also believe Complainant has, on the balance of probabilities, discharged its burden of proof in relation to the requirement of paragraph 4(a)(iii). Given the strength of Complainant�s trademark and the absence of any assertion by Respondent to the contrary, I conclude that Respondent was aware of Complainant�s trademark at the time of registration of the domain name. Given this fact, and the fact that Respondent at the time of registration did not have (and still does not have) a legitimate interest in the domain name, I also conclude that the reason Respondent registered the domain name was to take advantage of the reputation in Complainant�s trademark. Thus, I find that Respondent registered the domain name in bad faith. As the majority acknowledge, Respondent�s use of the domain name since registration adds nothing to the bona fides of Respondent�s website, but rather diverts users to an undoubtedly unexpected though apparently non-confusing destination. I conclude that the purpose of Respondent�s use of the domain name is to attract mistaken users to its website. Given that Respondent has no legitimate interest in the domain name it is so using, I consider this use to be a bad faith use of the type contemplated by the Policy. Accordingly, I find that Respondent registered and is using the domain in bad faith, as required by paragraph 4(a)(iii).
Andrew Frederick Christie
Dissenting Panelist
Dated: September 10, 2002
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