Image source: https://blog.ipleaders.in/insights-oligopolistic-nature-nike/

This article has been written by D.Priya pursuing the Diploma in Cyber Law, FinTech Regulations and Technology Contracts from LawSikho. This article has been edited by Aditi Deshmukh (Associate, Lawsikho) and Dipshi Swara (Senior Associate, Lawsikho). 

Introduction

Nike Innovate C.V of Beaverton, Oregon, United States of America is the trademark owning subsidiary of a publicly traded multinational company Nike, Inc., (“NI”), headquartered in the United States of America. NI is active in the clothing industry, further Nike Innovate owns a portfolio of trademark registration for JORDAN (Word Mark) throughout the world. On March 31st, 2013, the domain named <authenticjordanair.com> was registered with eName Technology Co., Ltd (the “Registrar”) by Li Jian Fan of Putian, Fujian, China. The said domain name resolves to a website that purports to sell “JORDAN” sneakers. 

On August 29th, 2018, a complaint was filed in WIPO Arbitration and Mediation Center (the “Center”) by Nike Innovate C.V against Li Jian Fan to transfer the disputed domain name which resembles Nike Innovate C.V’s Trademark “JORDAN”. On which the WIPO (World Intellectual Property Organisation) appointed Deanna Wong Wai Man as the sold panelist on October 12, 2018 and the matter was decided on 24 October 2018. 

Facts of the case

Nike Innovate being the owner of the registered trademark named ‘JORDAN”, which has jurisdiction throughout the world, found that a website registered in the domain name <authenticjordanair.com> with eName Technology Co., Ltd (the “Registrar”) with no rights and legitimate interests. Further, the website is purported to sell “JORDAN” sneakers which is confusing and identical to that of Nike Innovate C.V’s Trademark “JORDAN”.

Being aggrieved by the misuse of a confusing domain name, Nike Innovate C.V, filed a complaint with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. After verifying with the “Registrar”, the center confirmed that Li Jian Fan listed as the registrant and provided the contact details. The “Center” sent a formal communication to the parties on confirmation of the language of the proceedings to be in English and Chinese. On September 7 2018 proceeding began, as the complaint satisfied the requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for “UDPR” (the “Rules”) and the WIPO Supplemental Rules for “UDPR” (the “Supplement Rules”).

In order to understand “UDRP”, we have to first understand the meaning of the Domain Name dispute and cyber-squatting. Domain name dispute is nothing but trademark infringement on the internet. The issue is the relationship between Domain Name registration and trademark rights. A major challenge is that registration for Domain Name is on a first-come, first-serve basis and the person who registered a domain first is the owner of that Domain Name, in such circumstances, disputes arise from the abusive and bad-faith registration of Domain name that includes trademark, and is known as “Cybersquatting”. The only intention of the cyber squatter is to fetch financial gain by reselling the well-known internet domain at a profit. The dispute of such a nature is resolved by approaching WIPO (the “Center”) with the help of “UDRP”. 

Parties arguments

Nike Innovate C.V contends that the disputed domain name is confusingly similar to its trademark of “JORDAN”, that Li Jian Fan has no rights or legitimate interest regarding the disputed domain name, and that the registered domain name was being used in bad faith.  

Nike Innovate C.V claimed that its trademarks are famous and well known in the clothing industry, and provide a sales number of carrying its trademarks all over the world. Nike Innovate C.V further contended that the disputed domain name is linked to an active website, using Nike Innovate C.V’s trademarks and offering counterfeit products for sale to consumers with no rights or legitimate interest regarding the domain name and uses in bad faith. 

Lis Jian Fan, on the other side, failed to respond to any of the Nike Innovate C.V contentions. 

Panel decision

The panel decision is based on the two issues:

  1. Language of proceedings. 
  2. Policy requirement; namely identical or confusingly similar, rights or legitimate interest, and registered and used in bad faith. 

Language of proceedings

As per paragraph 11(a) of the “Rules”, the language of the administrative proceedings shall be the language of the registration agreement. The Complainant Nike Innovate C.V registered in English, whereas Li Jian Fan registered in Chinese. On perusal, the panel concluded that even after giving the liberation to select their respective language to contest the case, the respondent Li Jian Fan failed to respond in the language’s selection and the fact that the website to which dispute domain name lead contains not a single word in Chinese and only contains text in English, so the panel concluded the proceedings shall be in English.

Policy requirement

In order to contest the issued under “UDRP” the policy requires it to fulfill the three major elements:

  • the disputed domain name is identical or confusing, similar to a trademark or service mark in which the complainant has rights;
  • the respondent has no right or legitimate interest in respect of the disputed domain name;
  • The disputed domain name has been registered and is being used in bad faith. 

Identical or confusingly similar

After perusal of the evidence, the panel finds that the complainant Nike Innovate C.V has shown that he has valid rights in the trademark “JORDAN”, which also shows the use and registration of the same as trademark in a large number of jurisdictions throughout the world. The panel finds that the addition of “authentic” and “air” does not distinguish the disputed domain name from Nike Innovate C.V trademark. 

Further, the panel finds Nike Innovate C.V intensively using the sign “air Jordan” as an unregistered trademark for one of its shoe products links since 1984. Therefore, the panel ruled that the disputed domain name is confusingly similar to the Nike Innovate C.V registered and unregistered trademarks as per the WIPO Overview(Section 1.8) and it needs to be protected as per WIPO Overview, (Section 1.3) for unregistered trademarks. 

Right and legitimate interest

Nike Innovate C.V has provided enough evidence that Li Jian Fan has no rights or legitimate interest in the disputed domain name as he is not authorized with any license, distribution agreement or other permission from the trademark owner Nike Innovate C.V to resell or distribute and Li Jian Fan neither making a legitimate noncommercial use or fair use of the Nike Innovate C.V, trademark “JORDAN”.

After considering the facts that Li Jian Fan failed to show evidence to prove his rights and legitimate interest, the panel ruled that Nike Innovate C.V had satisfied the requirement of the “Policy”.

Registration and used in bad faith

Nike Innovate C.V being the owner of the famous trademark provided evidence to show that Li Jian Fan used the domain name in bad faith as the website displays Nike Innovate C.V trademark “JORDAN” across its top banner intended to divert consumer to the disputed domain name, where unauthorized products are sold. The panel took note of the fact that the mere search engine must have shown that Nike Innovate C.V trademark “JORDAN” at the time of registration of the domain name <authenticjordanair.com>.

The panel further noted that Nike Innovate C.V submitted enough evidence to show that Li Jian Fan is already conducting opportunistic domain name squatting activities, using the domain name in bad faith to take unfair advantage of the trademark in a habitual manner in order to fetch financial gain. Therefore, the panel concluded that Nike Innovate C.V satisfied the requirement of the “Policy” under the ‘registered and used in bad faith’ clause and that it is in accordance with paragraph 4 (i) and 15 of the Rules, thus the panel ordered that the disputed domain name <authenticjordanair.com> be transferred to the Nike Innovate C.V. 

Conclusion

 As the facts and evidence clearly showed that Li Jian Fan registered the domain name in order to confuse the customers and that he has no rights or legitimate interests to the trademark, “JORDAN”.  Further, Nike Innovate C.V proved that Li Jian Fan registered the disputed domain name to divert consumers to the disputed domain name to sell unauthorized counterfeit copies of the Nike Innovate C.V products in bad faith. Based on the said evidence and fact, the panel ordered to transfer the disputed domain name to the complainant Nike Innovate C.V.

A similar view is also taken in Oki Data Americas, Inc V. ASD, Inc, WIPO cases No. D2001-0903, Nintendo of America.Inc V. Tasc. Inc and Ken Lewis, Arcelormittal (SA) v. Manuel Lopez, Manuel Lopez Cantu and Philip Morris Products S.A Vs. Yang Jian Nan. 

Therefore, it is concluded that the mere concept of registering domain name in first come first served bases with addition of prefix and suffix to the existing trademark, will not prevent the trademark owner from claiming their rights against the misuse of their trademark as per the Uniform dispute resolution policy, further the policy protects not only the rights of the trademark holder but also protect the unregistered sub products on providing with evidence that the owner using the product name for long time and on production of evidence that advertisements made on the unregistered products. Thus, the above case explains the domain name dispute and cybersquatting in a detailed manner.  

References

  1. https://www.wipo.int/amc/en/domains/decisions/text/2018/d2018-1962.html
  2. https://www.icann.org/resources/pages/help/dndr/udrp-en

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