Nike loses split decision on ''


A three-member panel at the World Intellectual Property Organization's Arbitration and Mediation Centre has found against Nike Inc in its case against Circle Group Internet Inc (CGI) for its registration and use of ''.

Nike has used and promoted its JUST DO IT trademark worldwide since 1992. CGI was founded in 1994 as a source for funding and consulting for technology companies. It registered '' in February 1997 and claimed in its response to have used it continuously since that time.

The panel majority found the dispute to be a "very close case," struggling with the issues of whether CGI (i) possessed a legitimate interest in the domain name, and (ii) registered it in bad faith. CGI asserted that it had used the domain name on its "main web page, highlighting the bona fide offering of funding, consulting and media services." The majority determined that there was no reason not to believe these assertions. Although CGI did not refute allegations that it knew that Nike had trademark rights, the panellists felt that Nike had not presented sufficient evidence to establish that CGI did not have a legitimate interest.

The panel majority then focused on Article 4 of the Uniform Domain Name Dispute Resolution Policy, which requires bad-faith registration and use for a complainant to be successful. They determined that CGI's purpose in registering the domain name was to use it as its main website. The majority also found that Nike had failed to establish bad-faith intent on the part of CGI, taking into consideration that five years had passed since the registration, and Nike had not taken any action against the registrant until January 2002. Additionally, Nike only recently registered ''.

The dissenting panellist, Andrew Christie, believed the strength of Nike's mark, in addition to CGI's failure to provide a reason for registering the domain name in light of its use related to funding, consulting and media services for technology companies, did not give rise to legitimate interest in the domain name. Christie further concluded that, given CGI's lack of a legitimate interest and the strength of the mark, CGI likely registered the domain name to take advantage and commercially benefit from the acquired reputation associated with Nike's mark.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP, Washington DC

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