July 22, 2016
On July 15th , 2016, the UDRP complaint filed by Nike Inc. against the domain name nikegoogle.com (decision available here ) was denied. According to the complainant, the complaint was filed with the knowledge and consent of Google Inc. Which also consented for the domain name to be transferred to Nike Inc. However, one of the exhibits of the complaint consisted in a copy of an email from Google Inc. Asking the domain name registrant to transfer the domain name for 100 USD.
The Panelist observed that Google Inc. neither had been joined as a complainant nor had asserted its rights on « google ». Therefore, the complaint was denied without any consideration on the merits.
This decision might seem harsh at first, especially since Google Inc. obtained the transfer of a domain name including a third-party trademark in the past : google-ipad.com (decision available here ). However, in this decision we can see that Google used a very different approach, arguing that the mere addition of a third-party trademark did not allow the registrant to avoid a confusing similarity claim. In this case, Google did not mention any concerted action with Apple Inc. .
The outcome of the nikegoogle.com case dictates prudence as to the strategy to adopt regarding a domain name which includes two trademarks from different rights holders.
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