Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 03867 Nike International Limited v Stewart Tempest
Decision of Independent Expert
1.     PARTIES

Complainant: Nike International Limited

Country: USA

Respondent: Stewart Tempest

Country: UK

2.     DOMAIN NAME

nikebauer.co.uk (the "Domain Name")

3.     PROCEDURAL BACKGROUND

3.1      A Complaint in respect of the Domain Name under Nominet UK's Dispute Resolution Service Policy (the "Policy") was received from the Complainant on 31 July 2006. Nominet forwarded the Complaint to the Respondent. A response was filed on 23 August 2006. A Reply was filed on 25 August 2006.

3.2      The dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure") on 27 September 2006. I was appointed as Independent Expert on 27 September 2006 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.

1. THE FACTS

4.1      The Facts set out below do not appear to be in dispute.

4.2      The Complainant is part of the multi-national Nike group of companies which is (as the evidence filed with the Complaint shows) one of the world's leading suppliers of sporting apparel and associated goods. In the Complaint it describes itself as "part of the worlds leading sports and fitness company with an annual turnover of $9 billion". It also describes itself as "the largest sportswear company in the UK". The evidence as filed (which is not challenged by the Respondent) shows that is an extremely well known organisation.

4.3      The Complainant has filed extensive evidence as to the extent of its activities, the number of trade marks it owns and the value of its brands. It is not necessary for present purposes to repeat all of that evidence in this decision.

4.4      In 1995 the Complainant acquired Bauer (the precise corporate name of this company prior to the acquisition is unclear, but does not matter). This was a company which had its origins some 75 years ago and which, at the time of the acquisition, was renamed Bauer Nike Hockey Inc ("Bauer Nike"). Bauer Nike is the worlds leading manufacturer of ice hockey equipment with an estimated annual turnover of $350 million.

4.5      The Complainant has a large number of UK registered trade marks including trade marks for the word "Nike" and for the word "Bauer". It advertises extensively using both the name "Nike" and the name "Nike Bauer".

4.6      The Doman Name was registered in February 2006 by the Respondent. The Respondent has not established any active website under the Domain Name which is currently pointing at a "holding site" operated by Low Cost Names, the organisation who registered the name for the Respondent.

4.7      The Respondent did not reply to a request from the Complainant asking for transfer of the Domain Name in return for payment of out of pocket costs.

2. THE PARTIES' CONTENTIONS

Complainant

5.1      The Complaint says that it has rights in the names Nike, Bauer and Nike Bauer in combination. It says the Domain Name is confusingly similar to these.

5.2      It says the Respondent, who has no connection with the Complainant or its business, can have no legitimate reason for choosing nikebauer as the Domain Name.

5.3      It says that the Domain Name is unfairly disrupting the business of the Complainant because the "holding site" to which it points provides links to a number of search categories including "fitness equipment" which, when clicked on, provides a link to a site with products which are unrelated to those of the Complainant.

5.4      The Complainant also says that the Response provided by the Respondent (see below) indicates a further taking unfair advantage of the Complainant's registered trade mark, because the Respondent states that he intends to use the Domain Name with the aim of directing internet traffic to a hockey equipment website which "will be selling other brands in addition to Nike Bauer brands".

5.5      The Complainant also provides some information which it says suggests the Respondent filed a false address when registering the Domain Name.

Respondent

5.6      It is simplest to quote verbatim the Respondent's response which is short and reads as follows:

"nikebauer.co.uk was purchased with the aim of directing UK internet traffic to a Nike Bauer section, a hockey equipment website [sic]. The site will be selling Nike and Bauer hockey products along with other hockey brands. The intention is not to masquerade as Nike or Bauer or act in any detremental [sic] way to the brands or their products but to promote and sell Nike Bauer hockey products in the UK."

3. DISCUSSION AND FINDINGS:

General

6.1      The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:

6.1.1. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

6.1.2. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

6.2      "Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law." I am satisfied that the Complainant has established that it has a very well known reputation in the names Nike and Bauer and Nike Bauer in combination. It has registered trade marks for Nike and Bauer, and although it does not have any registered trade marks for Nike and Bauer in combination I am satisfied the evidence that it has filed has established it has a significant reputation internationally, including in the UK, in that combination of names.

6.3      The Domain Name is arguably identical to a name in which the Complainant has rights, the suffix ".co.uk" being ignored for this purpose. If it is not identical (it may be that the Complainant's rights in the combination of words is in Bauer Nike rather than Nike Bauer) it is certainly similar

6.4      Accordingly I find the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

6.5      Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:

6.5.1. was registered or otherwise acquired in a manner which, at the time when registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

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

6.6      It is quite clear that the Domain Name was chosen because of its association with the Complainant and its products. There could be no other reason for choosing these words, each of which appears to be highly distinctive and which in combination are clearly also highly distinctive. In any event the Respondent does not seek to suggest that there was any other reason for choosing this name.

6.7      There is no convincing evidence that the Respondent had any legitimate reason for adopting the Complainant's name. The Respondent has asserted that he intended to set up a website relating to the supply of hockey equipment. He has not given any detail at all about this plan, nor has he provided any corroborating evidence. He has not even filed any supporting evidence as to his business background and experience in general, or as to the particular website which he envisaged setting up. In the absence of such evidence I do not find his explanation to be credible.

6.8      By arranging for the website to be pointed at a holding web page which links through to the suppliers of other sports equipment the Respondent is using the Complainant's name in a manner which takes unfair advantage of or which is unfairly detrimental to the Complainant's Rights. In essence people searching for "Nike Bauer" may well find the site to which Complainant has pointed the Domain Name, and may through that be directed to suppliers of other sporting equipment. That is unfairly disrupting the business of the Complainant because potential purchasers who use the Complainant's name to search are diverted to a site which offers competing goods from alternative suppliers. The evidence is unclear but I am prepared to assume, in the Respondent's favour, that people who are diverted in this manner realise that the site they end up at is nothing to do with the Complainant. I do not know to what extent actual purchases which might otherwise have been placed with the Complainant are instead placed with a third party. I am prepared to infer that with this type of product (ice hockey equipment) there is at least a risk that some such diversion will occur. I consider that to be an unfair disruption of the Complainant's business. Such disruption is evidence under Paragraph 3 a i C of the Policy that the registration is Abusive.

6.9      Furthermore as the Complainant points out, even were the Respondent's submission accepted, namely that he did intend to set up an internet website "offering hockey equipment", his own Response makes clear that that equipment would include equipment supplied by other manufacturers as well as Nike Bauer. That will similarly be taking unfair advantage of the Complainant's Rights.

6.10      In the light of the above finding I do not need to conclude whether the further point relied upon by the Claimant, namely that the Respondent has provided false address details, is or is not correct.

6.11      In the circumstances, I consider that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

4. DECISION

Accordingly, I find 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. I therefore determine that the Domain Name be transferred to the Complainant.

………………………………

Nick Gardner

16 October 2006