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Nike.dev : #Domain UDRP delivers no victory to famous shoe manufacturer

Nike is a famous trademark, but it’s also the name of the Greek winged goddess Nike (Nee-kee) – the personification of victory.

In fact, the famous shoe manufacturer Nike Innovate C.V. based its name on the aspiration that its brand delivers victorious results to its athlete consumers.

The UDRP filed against the domain Nike.dev was apparently due to the obligation that every trademark holder has to protect their brand.

The domain transfer was denied.

Alas, there was no victory for Nike Innovate C.V. as the Respondent in this UDRP prepared his position rather well; the domain is part of a group of other domains of Greek gods and goddesses, with an alleged business plan that doesn’t infringe on the goods and services of the famous NIKE mark.

Said the Respondent:

Complainant indeed has the rights to the NIKE brand and trademark. However, I registered nike.dev in honor of the goddess of victory from Greek mythology. In Greek mythology Nike is the daughter of god Titan and goddess Styx. Nike is the sister of Kratos, Bia, and Zelos. I have other domains to honor these mythological figures. From the Sanskrit language ‘deva’ has the meaning of divine and heavenly. I perceive the .dev TLD (Top Level Domain) as an abbreviation of ‘deva’. To me, nike.dev literally means victory god.

The sole panelist at the WIPO sided with the Respondent in this case, ordering the domain name Nike.dev to remain with them. Full details on the decision follow:

Nike Innovate C.V. v. Contact Privacy, Inc. Customer 1243971962 / Ladinu
Case No. D2020-3067

1. The Parties

Complainant is Nike Innovate C.V., United States of America (“United States”), represented by Stobbs IP Limited, United Kingdom.

Respondent is Contact Privacy, Inc. Customer 1243971962, Canada / Ladinu, United States.

2. The Domain Name and Registrar

The disputed domain name <nike.dev> (the “Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 23, 2020.

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”).

On December 7, 2020, Respondent submitted a formal response during the pre-commencement state of the proceedings, claiming among other things that he registered the Domain Name in reference to the Greek goddess of the victory, for his personal projects.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on February 2, 2021. 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

Complainant’s NIKE brand is world famous in connection with athletic footwear, sports gear, sports equipment, clothing, and related items. The NIKE mark is registered in jurisdictions throughout the world. As set forth at length in the Complaint and accompanying annexes, the NIKE brand is one of the most valuable brands in the world. Numerous panels in previous UDRP cases have correctly recognized the fame of the NIKE mark.

The Domain Name was registered on February 23, 2019. The Domain Name resolves to a largely undeveloped website, which features a photo of a statue of Nike, described as “Goddess of victory.” Below the photo of Nike is the following text:

“[…] DISCLAIMER

This site nike.dev is in no way associated with the NIKE brand

NIKE

Peer0 of my WireGuard vpn. Contact Me

OTHER PEERS (HOPEFULLY):

– bia.dev
– zelus.dev/zelos.dev
– kratos.dev

This project is maintained by ladinu”

The disclaimer was added to Respondent’s website on November 29, 2020, a few days after the Complaint was filed in this proceeding.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. Complainant argues that “the combination of Complainant’s NIKE brand and then .dev gTLD creates the false impression that the domain name is being used by the Respondent for the sale of genuine and authorised products bearing the Complainant’s NIKE brand, or is being used to promote the development of future products under the Complainant’s NIKE brand.”

Complainant argues further that, given the longstanding fame of the NIKE mark, “there is no believable or realistic reason for the registration or use of the disputed domain name other than to take advantage of the Complainant’s rights.” Complainant also notes that Respondent’s registration information was “hidden behind a proxy service.”

Finally, Complainant cites the “passive holding” doctrine first articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

As noted above, Respondent sent an email to the Center on December 7, 2020 at the pre-commencement stage of the proceedings, but otherwise did not respond to Complainant’s allegations. Respondent’s December 7, 2020 submission states in relevant part:

“I, the respondent, registered this domain for personal use of my Wireguard VPN tunnel and other personal projects. I have registered several domains in the name of Greek gods and goddesses that I use for my personal projects as easy-to-remember names. These include bia.dev (which I run my email server), kratos.dev, zelos.dev and nike.dev. Nike is the Greek goddess of victory. As stated on the website of nike.dev, I intend to use nike.dev as ‘peer0 of my WireGuard vpn.

The complainant makes the argument that since nike.dev contains little or no content it is similar to no website appearing at all and ‘bad faith’ can be found when no website appears at the domain name. This is a ridiculous argument. Purpose of a domain name can be many things. For my Wireguard vpn tunnel, the content of the website does not matter at all. The domain simply acts as an easy-to-remember name which resolves to a server that is responding to Wireguard VPN client. Whatever the domain displays a website is not relevant.

The complainant also suggests ‘bad faith’ can be found since my name is concealed through a proxy service. I believe my registrar concealed my information by default tom protect me against spam emails. There is a ‘Contact Me’ link displayed on the website of nike.dev which allows anyone to contact me in a safe manner. […]

I did not register nike.dev for the purpose of selling, renting or transferring the domain name to the Complainant or any sort of gain. I registered the domain for personal use. […]

Complainant indeed has the rights to the NIKE brand and trademark. However, I registered nike.dev in honor of the goddess of victory from Greek mythology. In Greek mythology Nike is the daughter of god Titan and goddess Styx. Nike is the sister of Kratos, Bia, and Zelos. I have other domains to honor these mythological figures. From the Sanskrit language ‘deva’ has the meaning of divine and heavenly. I perceive the .dev TLD (Top Level Domain) as an abbreviation of ‘deva’. To me, nike.dev literally means victory god.

[…] I started using nike.dev around February 25, 2019, well before the complainant’s notification of dispute. You can see the public record of website edits here: […]”

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service 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.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the famous trademark NIKE through widespread registration and use demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In view of the Panel’s decision below on the “bad faith” element, the Panel need not decide whether Respondent lacks rights or legitimate interests in respect of the Domain Name.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes, based on the fairly limited factual record here, that Complainant has not carried its burden to prove that Respondent registered and has used the Domain Name in bad faith. The allocation of the burden of proof is ultimately the critical factor here, as the Panel finds this a close case. Respondent lays out a simple explanation for his motivation vis-à-vis the Domain Name. It is not abundantly supported, and some aspects of Respondent’s account (e.g., that he views the “.dev” gTLD to mean “deva” or “divine”) are somewhat dubious. Even so, Respondent presents a fairly cogent explanation, and asserts quite rightly that in appropriate circumstances a domain name may be put to personal use, even if it resembles a well-known trademark.

It also bears noting that, as far as the record indicates, in two years Respondent has never offered to sell the Domain Name to Complainant or anyone else, and his website does not indicate that the Domain Name is for sale.

On the record presented here, the Panel simply cannot make the leap that Complainant urges, essentially on the sheer strength of its famous trademark. The Panel, weighing the record and the Parties’ submissions, does not perceive a sufficient basis on which to disbelieve Respondent’s claim that his purposes are entirely personal and noncommercial.

In Philip Morris USA Inc. v. Borut Bezjak, A Domains Limited, WIPO Case No. D2015-1128, the UDRP panel denied a complaint involving the domain name <marlboro.party>, despite the clear fame of the complainant’s MARLBORO trademark. On the issue of bad faith, the panel observed:

“Having reviewed the contentions of the Parties and the evidence in the case file as well as the content of the website at the disputed domain name, the Panel is not satisfied that these sources of information contain conclusive evidence showing that the Respondent has specifically targeted the Complainant’s MARLBORO trademark when choosing and registering the disputed domain name and when setting up the associated website. The MARLBORO trademark is well known for tobacco products, but there are also a number of geographic locations named Marlboro in the United States and elsewhere, and the disputed domain name appears to be one of the hundreds of domain names of the Respondent that contain geographic names and that are linked to websites similar to the website at the disputed domain name. These domain names were registered and their websites were activated prior to the present dispute. While the Panel finds the Respondent’s various assertions among its submissions in this proceeding create a scattered and opportunistic impression, that does not imply that the Respondent was targeting the Complainant on one domain name among the many registered of a consistent different type. At first glance, it also appears to the Panel that these other domain names do not incorporate other famous trademarks.

As discussed in relation to the issue of rights and legitimate interests, the website at the disputed domain name is not filled with original content about any specific geographic location, but it does not significantly refer to, offer or promote tobacco products either. Indeed, there is a single photo in its ‘Gallery’ section taken from Flickr that depicts a smashed pack of Marlboro cigarettes. Also, as contended by the Complainant, the metatags of the website at the disputed domain name refer to various locations called ‘Marlboro’; the Complainant does not contend that these metatags refer to tobacco products or to the Complainant and its Marlboro cigarettes.

As stated previously, the Panel is cognizant that a large-scale domain registration operation such as presently considered may be used to mask or legitimize domain name registrations undertaken for bad faith purposes – such as to capitalize on the value of a well-known trademark. Furthermore, the Panel considers that registrants engaged in automated bulk transfer or registration of domain names have some level of responsibility to ensure that their algorithms and procedures avoid the selection and use of domain names based on their trademark value. In light of the evidence available to the Panel, several indicia exist which support the Respondent’s asserted plans for the registration of geographically-related domain names, with nothing besides incidental commercial activity and occasional and neutral references to the Complainant for this Panel to weigh in opposition.

In view of the above, the Panel finds that the Complainant has not met its burden of proof to establish that it is more likely than not that the Respondent has registered and used the disputed domain name in bad faith by targeting the Complainant’s MARLBORO trademark and attempting to extract profit from its popularity. The Panel notes that this finding is made only within the narrow scope of the Policy, and is without prejudice to any findings that a competent court may make using all procedural means for collection of evidence at its disposal, taking account of the future conduct of the Respondent, notably the incorporation of trademark-related commercial content relevant to this dispute, or efforts to sell the disputed domain name at a price apparently inconsistent with the plans asserted here by the Respondent. Future respondent conduct may also be relevant in the context of UDRP refiling principles.”

The Philip Morris decision supra is not factually on all fours with the instant case, but there are some important parallels, including the shared observation that future conduct by the respondent may prove relevant to a possible UDRP refiling. Another important lesson is that a famous trademark, such as MARLBORO or NIKE (or APPLE) which are also dictionary terms, does not necessarily give its owner the right to recover any and all domain names which contain the famous mark and nothing more. It also bears noting that the respondent in the Philip Morris case supra was using the disputed domain name for “incidental commercial” gain, which does not appear to be the case here.

In the instant case, the record lacks any hard evidence that Respondent targeted Complainant’s admittedly world-famous NIKE trademark when registering the Domain Name. As noted above, within days of registering the Domain Name, Respondent registered three other domain names which also correspond to Greek deities (<bia.dev>, <zelos.dev>, and <kratos.dev> and at least the former seems to be set up under an “NGINX” server) who were siblings of Nike. Respondent claims to have registered the Domain Name (and the other domain names) “to have a personal Wireguard vpn cluster,” and that his first use in this vein occurred within a few days of his registration of the Domain Name. Respondent asserts further that he will never use the Domain Name for commercial use, but only for personal use. The record is devoid of any evidence to the contrary.

As such, despite the obvious fame of Complainant’s NIKE trademark, the Panel can find no basis in the record upon which to conclude, on a balance of probabilities, that Respondent registered or has used the Domain Name in bad faith. The burden of proof rests with Complainant, and in these circumstances, the sheer strength of its NIKE trademark has not carried the day. Again, as was observed in the Philip Morris decision supra quoted above, Respondent’s future conduct vis-à-vis the Domain Name might prove relevant to a potential future refiling under the Policy.

Complainant has not established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Sole Panelist
Date: February 16, 2021


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