The US-sportswear giant is the registered owner of the JUST DO
IT trade mark in the US, Australia, Canada and the EU. It brought
the case against Circle Group Internet under the World Intellectual
Property Organisation’s domain name dispute rules.
Nike argued that the domain name, identical to its trade marks,
could confuse consumers, making them believe that Circle’s web site
and activities were “connected or affiliated with, sponsored or
endorsed by, or emanate from” Nike.
Circle denied the allegations, arguing that Nike had failed to
establish bad faith. The company pointed out that, although Nike
owns the ‘justdoit.com’ and ‘justdoit.org’ domain names, they are
not being used. Circle also claimed that it has a legitimate
interest in justdoit.net because it has been used at all times
since its registration, first at the company’s main web page and
since 1999 as a redirect.
Two WIPO panellists reasoned that, although they were “troubled
by [Circle’s] argument that using another’s trade mark as an
automatic redirect to an unrelated web site… establishes legitimate
interest”, Nike offered “insufficient proof” to justify a finding
in its favour.
The panel concluded that the “current use [of the domain name]
solely as a redirect could potentially qualify as bad faith use,”
but that there was no evidence of bad faith registration as
required by the rules.
One panellist dissented from the judgement. Andrew Frederick
Christie referred to the strength of Nike’s JUST DO IT trade mark
and noted that Circle had failed to give “a plausible reason” for
registering the domain name.
He pointed out that the activities of Circle are completely
unrelated to the domain name and reasoned that the name had simply
been registered “to attract mistaken users to its web site.”
