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Via the Guardian:
News Corporation-owned MySpace has won the right to use the MySpace.co.uk domain name, although another company had registered the domain back in 1997, six years before the launch of the MySpace network.
“This dispute resolution service decision is counter-intuitive at first sight and serves as a warning that domain registrations are not guaranteed and need to be secured by pro-active management as well as a clear understanding of the dynamic nature of the industry,” said Jonathan Robinson, the chief operating officer at web services company NetNames.
The domain was initially used for an email service, but the registrant later decided to park the domain when it started to receive tons of traffic. It was therefore decided that the registrant tried to profit from the popularity of MySpace’s brand by forwarding it to a parked page with advertisements. Unfortunately, the targeted ads also included text links to social networks, including paid links to MySpace.com.
[The registrant] said that the choice of ads that run on the myspace.co.uk website are determined by algorithms linked to search terms by internet users, which in recent years have been dominated by people looking for MySpace.
Gold, the arbitrator, said that it was not relevant that [the registrant] did not select the specific ads. Because it owned the website it was responsible for those ads and income made off the back of MySpace.
This is a dangerous ruling, in my opinion. First, the domain was registered before the launch of MySpace’s service and before the registration of their trademark. Secondly, the owner of a domain can usually not actively control the content displayed on parked pages. Thirdly, the popularity of MySpace would have cost the registrant money because of increasing traffic and bandwidth costs if he had continued to operate the email service under the domain. He would arguably have lost money from that additional traffic caused by Myspace had he not decided to park it instead.
What’s the lesson learned? Double-check the content and advertisements on any of your domains that might be trademark-sensitive, even if the trademark has been registered and established a long time after you bought the domain, because otherwise you’d be risking the loss of your domain name due to using it in “bad faith”.
An interesting precedent
Maestro bids to thwart third party “maestro.co.uk”
Topic: Domain names
Who: Maestro International, Inc v Mark Adams
Where: Nominet UK Dispute Resolution Service
When: 13 December 2007
Law stated as at: 31 January 2008
What happened:
The Complainant, Maestro International, Inc (”Maestro”) appealed against Nominet’s refusal to transfer to it the domain name maestro.co.uk (the “Domain Name”).
The Respondent (”Mr Adams”) provides web design and domain name registration services. Notably his domain name portfolio contained a variety of well known trade marks such as bigbrothertv.co.uk and popidol4.co.uk. Mr Adams registered the Domain Name on 5 April 2006. After Maestro contacted Mr Adams about a possible purchase of the Domain Name he responded that he would “only consider selling it for an exceptional offer”. Correspondence followed which culminated in Mr Adams refusing the transfer the Domain Name, stating that it was registered by him with the dictionary meaning of the word in mind and with no knowledge of the Maestro brand.
In order to obtain a transfer of the Domain Name, Maestro had to show:
1. that it has rights in respect of the name or mark which is identical or similar to the Domain Name; and
2. that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Abusive registration?
The Panel was satisfied that Maestro had rights in the MAESTRO name. On the question of Abusive Registration, Maestro had to satisfy the Panel that, on the balance of probabilities, the Respondent registered the Domain Name and/or used the Domain name with the Complainant in mind.
Maestro argued that the following issues should lead the Panel to conclude that Mr Adams registered or used the Domain Name with a view to taking unfair advantage of Maestro’s rights:
1. Mr Adams’ denial of knowledge of the MAESTRO trade mark which is a household name;
2. Mr Adams’ statement that he intended to use the Domain Name for music downloads tuition and education services;
3. Mr Adams’ track record of registering domain names featuring well known trade marks.
In relation to the first point, the Panel agreed that Mr Adams’ should have known of the MAESTRO trade mark. However, when the trade mark in question is a dictionary word, there has to be something more that knowledge of the trade mark to justify a finding of an Abusive Registration. In relation to the third point, if it were the case that Mr Adams’ portfolio comprised the Domain Name along with further objectionable domain names and no others, the Panel may have accepted that this was an Abusive Registration. However, on the facts, the Panel were not able to draw this inference because Mr Adams’ portfolio included domain names that did not feature well known trade marks.
In conclusion, the Panel held that where a domain name is a single ordinary English word, the meaning of which has not been displaced by an overwhelming secondary meaning, the evidence of abuse must be highly persuasive if it is held to be an Abusive Registration.
Why this matters:
This decision illustrates the challenges a complainant will face in proving that a domain name registration is abusive where the trade mark in question is a single dictionary word even if the trade mark is a household name. Conversely, where a trade Mark comprises an invented word or an unusual combination of words, it should be easier for the rights holder to show that the registration is abusive.
Jessica Stretch
Solicitor
Osborne Clarke, London
jessica.stretch@osborneclarke.com