Pursuing bad actors who sell counterfeit goods is a major goal for brands looking to protect their reputations. There are, of course, consumers who will actively sacrifice quality for price and pursue counterfeit goods. But while brands need to address this, it’s particularly important to shut down sites that could dupe unsuspecting consumers into thinking they are receiving authentic goods or content when they are not. In these cases, consumers are not making a choice to sacrifice quality and will associate the brand with poor products, poor online experiences, and in some cases, the harm that could come from using a counterfeit product.
Recently, Nike used the UDRP to take down a counterfeit goods website hosted on the domain name NikeIran.com. In its Complaint, Nike noted that it “does not have any stores in Iran and does not provide its products to any distributors in Iran. As such, any products offered by the Respondent in Iran are either illegally obtained or counterfeit.” The Respondent defaulted, and the sole panelist determined that the domain name should be transferred to Nike. A great win for Nike that will help the company protect its customers from products it cannot guarantee are up to Nike’s quality standards.
The panel found that the domain name was confusing with the world-famous NIKE brand: “The geographic indicator ‘Iran’ simply suggests that the Complainant’s products may be purchased in Iran” and even though “the Disputed Domain Name could be interpreted as ‘Nike, I ran’ (i.e., similar to ‘Nike, I jumped’; or ‘Nike, I walked’)…the addition of a generic expression relating to running would not change the Panel’s conclusion in respect of this element” because Nike makes running shoes.
Ultimately, the offering for sale of counterfeit goods proved that the Respondent was attempting to profit from the Complainant’s rights and was sufficient to find bad faith registration and use.
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