Nominet UK Dispute Resolution Service

DRS 04601

Nike International Limited and Robert Morrison

Decision of Independent Expert

1.	Parties

Complainant: 		Nike International Limited	
Country:		US

Respondent:		Robert Morrison
Country:		Malta

2.	Domain Name

      nikestore.co.uk

3.	Procedural Background

The Complaint was lodged with Nominet on 10 April 2007.  Nominet validated the Complaint and notified the Respondent of the Complaint on 10 April 2007 and informed the Respondent that he had until 2 May 2007 to lodge a Response.  No Response was received from the Respondent and, on 3 May 2007, Nominet informed the parties that, in the circumstances, Nominet could not provide mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 18 May 2007.  On 17 May 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 23 May 2007 the undersigned David King (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties which might appear to call into question his independence and/or impartiality.  Nominet appointed the Expert in this matter on 24 May 2007.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of Nominet’s Dispute Resolution Procedure.  Nominet has written to the Respondent at the postal address and by e-mail to admin@melitaweb.net, the e-mail address shown in the Register Entry for the Domain Name, and to postmaster@nikestore.co.uk.  The e-mail to the postmaster address resulted in a Delivery Failure Report but, as far as the Expert is aware, the letter, which was sent by Air Mail, and the e-mail, which was sent to the e-mail address shown in the Register Entry were delivered to the Respondent. 
The Expert is satisfied that the Complaint was properly delivered to the Respondent and that, 
in the absence of a response from the Respondent, there are no exceptional circumstances 
present to prevent the Expert from proceeding with the Decision of this Complaint.

5.	The Facts

The Complainant is part of a leading sports and fitness company with an annual turnover of nine billion dollars.  It is known internationally.  It has stores and franchises throughout the world and is the largest sportswear company in the UK.  

The Complainant has extensive trade mark rights in the names NIKE, NIKE TOWN, NIKE MAXSIGHT, NIKE REGRIND and NIKE SHOX.  It designs, manufactures and markets a broad range of athletic footwear, apparel, bags and equipment under the trade mark NIKE.  The Complainant and its associated companies have used the name NIKE since 1971 and NIKE is now included in the Superbrands Global Brand list.  It has also sponsored various major sporting events in the UK and elsewhere.  

The Respondent registered the Domain Name on 11 September 2004.  The print-out of the Domain Name web-site provided to the Expert by Nominet indicates that the web-site is held on sedoparking.com, a domain name parking site with links to various web-sites offering sporting and associated products.

With the papers provided by Nominet to the Expert there is a file note which states that the Respondent name Robert Morrison has been mentioned in at least three decisions where there was a finding of abuse.

6.	The Parties’ Contentions

Complainant

The Complaint can be summarised as follows:

The Complainant has rights in the name NIKE and has produced evidence of its trade mark registrations and global fame and reputation.

The Domain Name was registered primarily for the purpose of making money by attracting customers looking for the NIKE web-site and NIKE products and so unfairly disrupts the Complainant’s business.  The sedo parking page provides a web page with added links and the Respondent receives money for each click on an advertisement.  The advertisements on the web-site direct potential customers to web-sites other than those providing NIKE goods.  The Respondent is therefore taking unfair advantage of the NIKE brand.  The confusion for potential customers  is increased by the fact that one of the links is the Complainant’s own web-site for NIKE STORE.

The Respondent has no intention of using the web-site for a legitimate purpose.  He has merely kept the Domain Name parked and has made no effort to use it for a legitimate purpose or interest.

Anyone seeing the Complainant’s trade mark NIKE in connection with footwear and sportswear in particular, would assume a connection with the Complainant.  This is detrimental to the Complainant, whose business is built on providing a particular style and quality for its products, which is unlikely to be provided by sites which, for example, advertise “cheapest fitness equipment”.

The use of the Domain Name is intended to create a misleading association with the Complainant.  It unfairly disrupts the Complainant’s business and tarnishes the NIKE trade mark.  The web-site leads to sites selling products other than the Complainant’s but directly competing with it and is, therefore, detrimental to the Complainant’s business.

The Expert has perused all the documentation, which the Complainant has supplied in support of its contentions.

Respondent

The Respondent has not responded to the Complaint.

7.	Discussion and Findings:

General

Paragraph 2 of Nominet’s Dispute Resolution Policy (“the Policy”) requires that, to succeed, the Complainant must prove to the Expert, on the balance of probabilities, both that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy.

Complainants’ Rights

The Expert is satisfied that the Complainant has Rights in the name NIKE by virtue of its registered trade marks and established international fame and goodwill.  The distinctive element of the Domain Name is the Complainant’s trade mark NIKE.  The other element is “store” on which the Complainant has not commented.  Although “store” is generic, the Expert considers that it has a clear connection with the Complainant and that “nikestore” is, therefore, similar to NIKE for the purpose of the Policy.

The Expert finds that, for the purposes of the Policy, the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.

Abusive Registration

Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i  was registered or otherwise acquired in a manner, which, at the time when the registration took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy.  It is apparent that the Complainant is relying on the factors set out in paragraphs 3 a i C and 3 a ii of the Policy.

As mentioned in paragraph 5 above, Nominet has provided the Expert with a file note, which states that the Respondent name Robert Morrison has been mentioned in at least three decisions where there was a finding of abuse. It is surprising that the Complainant has not made any reference to paragraph 3 a iii or paragraph 3 c of the Policy.  Under paragraph 3 a iii, it may be evidence of Abusive Registration if “the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.”  Paragraph 3 c of the Policy provides that “There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Cases in the two (2) years before the Complaint was filed.  This presumption can be rebutted (see paragraph 4(c).”

Nominet’s web-site contains a “3 Cases Respondent Table”, which comprises a table of cases, in which a Respondent is or may be a party found to have made an Abusive Registration in three or more DRS cases.  The Expert has inspected this Table and has found that the Respondent has been found to have made an Abusive Registration in no less than twelve DRS cases during the last two years.  In one of these cases, DRS 03702, the Expert considered in some detail whether the registrant in that case and in the Robert Morrison cases on Nominet’s Table were the same person.  The Expert agrees with the conclusion in DRS 03702 that they were the same person.  In the present case, the Respondent’s address in Malta is the same address as in five of the cases referred to in DRS 03702.  Although the Complainant has not referred to the Respondent’s history in previous DRS cases, the Expert cannot ignore the previous findings of Abusive Registration against the Respondent in cases which are similar to this one.  In the circumstances, the Expert finds Abusive Registration on this ground alone but will comment briefly on the contentions made by the Complainant.

Under paragraph 3 a i C, there may be Abusive Registration if circumstances indicate that the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.  Under paragraph 3 a ii of the Policy, there may be evidence of Abusive Registration if there are circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.  

The Expert agrees with the Complainant’s contentions on these issues. By parking the Domain Name on the sedo web-site, the Respondent is able to earn revenue for each click on a linked advertisement.  Although the Complainant has not provided evidence of actual disruption or confusion having occurred, the potential is obvious.  It is extremely likely that people and businesses wishing to access the Complainant’s web-site, in fact, visit the Respondent’s web-site, in the belief that the web-site is associated with or authorised by the Complainant.  The Expert concludes that, on the balance of probabilities, the Respondent has registered the Domain Name in order to take unfair advantage of the Complainant’s distinctive trade mark and world-wide reputation.  This is Abusive Registration within the terms of the Policy.

8.	Decision

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name www.nikestore.co.uk be transferred to the Complainant.

David King						 4 June 2007