In this case study video, I explain how Nike filed and lost a dispute over a domain name that consisted solely of the word “Nike.” The case is a good lesson for trademark owners trying to decide whether to file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP).
As I explain in the video, the owner of one of the best-known trademarks in the world – a brand that Forbes values at more than $39 billion – failed to convince a UDRP panelist that the disputed domain name <nike.dev> was registered in bad faith.
The disputed domain name resolved to what was described as “a largely undeveloped website” that included a photo of a statue of Nike, the Greek mythological goddess of speed, strength and victory, as well as a disclaimer that says it “is in no way associated with the NIKE brand” (although the UDRP decision said the disclaimer was added a few days after the domain name complaint was filed). The registrant of <nike.dev> argued that the domain name was not registered in bad faith under the UDRP, instead that it was intended to honor the Greek goddess and was to be used for personal projects, including, apparently, in connection with a VPN or virtual private network service.
In his decision, the UDRP panelist had no difficulty finding that the domain name was identical to the NIKE trademark, but ultimately he found that Nike had not proven the bad faith element. While the panelist said that it was “a close case,” he noted that the complaint and response provided what he called a “fairly limited factual record” and that Nike had not met its burden of proof.
Specifically, the decision says:
Respondent lays out a simple explanation for his motivation vis-à-vis the Domain Name. It is not abundantly supported, and some aspects of Respondent’s account… are somewhat dubious. Even so, Respondent presents a fairly cogent explanation, and asserts quite rightly that in appropriate circumstances a domain name may be put to personal use, even if it resembles a well-known trademark.
I wouldn’t read too much into this decision. I certainly don’t think it opens the doors in any way for cybersquatters to register famous trademarks as domain names with impunity. But where a trademark also has another meaning and where, as the panelist in this case said, the domain name registrant can offer “a fairly cogent explanation” for its activity, then the UDRP might not provide a remedy.
In my practice, that’s always something I try to anticipate prior to filing a complaint, to make sure that the complaint is worth filing in the first place and, if so, to include all potential factual and legal arguments to help ensure success.
