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.”