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Just Sue It

Counterfeiters are cashing in on Nike's valuable brand name, posing as authorized resellers online and playing on consumer trust in the company. But Nike's saying it's game over.

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Nike Inc. is seeking to wrest control over 66 Internet domain names it says are hawking counterfeit goods.

The athletic footwear and apparel giant filed a lawsuit in U.S. District Court in Virginia against the domain names, all of which are registered to entities in China.

The domain names were registered through VeriSign Inc. in Dulles, Virginia. Nike is seeking an injunction to have VeriSign transfer the names into Nike’s control.

Nike officials declined to comment on the pending litigation.

Officials with the nonprofit Coalition Against Domain Name Abuse, of which Nike is a member, said the case is an example of the rampant growth of "cybersquatting," a practice it says can cause damage to a corporate brand.

“It’s pervasive. Anywhere from dozens to hundreds of domain names can be registered every day that infringe upon their marks,” said Phil Lodico, vice president of the coalition. “The sheer scale of it is like death by a million paper cuts.”

The group estimates that cybersquatting costs brand owners $1 billion a year through diverted Internet traffic, the loss of consumer trust, and expenses related to combating the issue.

Nike’s lawsuit does not seek any financial compensation, though the company argues that the domains—using names such as NikeShoesInc.com, NikeObama.com, and Nike-Brand.com—are being used to sell unlicensed or counterfeit products with the company’s trademarks.

“Through such actions, Nike is irreparably damaged through consumer confusion, dilution, and tarnishment of its valuable trademarks,” the company said in court documents.

While legal actions against domain names by major consumer brands isn’t unusual, the Nike lawsuit stands out for sheer volume, said Andy Coombs, a Glendale, California, attorney serving as Nike’s outside counsel on the case.

Coombs couldn’t speak to Nike’s case in particular, but he said similar domain-name disputes are often handled case by case through an online arbitration process called the Uniform Domain Name Resolution Policy.

But that same process could require companies like Nike to bring proceedings against every registrant one by one.

Coombs sent each party cease-and-desist letters on November 25 on behalf of Nike, giving them 10 days to respond.

The lawsuit was filed only after receiving insufficient or no responses from the domain-name owners, he said.

Emails sent by the Portland Business Journal to several of the allegedly fraudulent websites went unreturned.

Since the lawsuit was filed on January 28, nobody has registered to defend the case.

Nike filed for relief under the federal Anticybersquatting Consumer Protection Act passed by Congress in 1999, a law Lodico said doesn’t provide an adequate deterrent for cybersquatters.

The law calls for penalties in the range of $1,000 to $100,000 per infraction. Lodico believes the penalties should be limited to the higher end of that spectrum.

“The purpose of a piece of legislation isn’t to have brand owners file lots of lawsuits,” Lodico said. “Wouldn’t it be better if there were a law on the books to deter the action from even happening?”


Erik Siemers writes for the Portland Business Journal.

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