A topical decision was recently made under Nominet's UK Dispute Resolution Policy (DRS). The policy which has jurisdiction over all '.co.uk' domain name disputes was invoked by Fremantle Media Limited against an individual who had registered, amongst others, the domain name britainsgottalent.co.uk.
Fremantle Media claimed that the domain name should be transferred to them on the basis that they owned a trademark in the words 'got talent'. In addition, they also claimed that they had an unregistered goodwill right in the 'got talent' mark in light of the international success of the television series Britain's Got Talent and America's Got Talent.
The respondent claimed that his website had nothing to do with the television series and, in fact, was an idea conceived before the Britain's Got Talent show was even thought of and originated from his daughters own experience of trying for band auditions. As a result, he thought it would be a good idea to have a site which would give information on when band auditions were on and news on up and coming opportunities in the entertainment industry. The site was never intended to have anything to do with the television series and when the show did arrive, a notice was put on the website to inform visitors that his website was in no way connected to the tv show.
In order to decide the case, Nominet's expert adopted the test set out under the DRS that in order for the domain name to be transferred, Fremantle Media has to prove that:
- they had rights in a mark which is either identical or similar to the domain name; and
- the domain name registered was an 'Abusive Registration'.
It was quickly decided that Fremantle Media had 'rights' in an identical or similar mark (based on its registered trademark in 'got talent'.) Therefore, the next step was to look at whether the registration had been abusive.
The DRS provides a non-exhausive list of what actions by a respondent could constitute an 'Abusive Registration'.
In the expert's findings, although the respondent claimed that his website was registered well before 'Britain's Got Talent' was on our televisions, further investigation found that:
- his domain name was registered on 15th September 2006 and by then there had already been a pilot show called Paul O'Grady's Got Talent in 2005; and
- in early 2006 there was the announcement of the commencement of America's Got Talent.
The point was also raised that it is common practice for the development of regional variations of popular shows in the entertainment industry, especially from the USA to UK and vice versa. As a result it was reasonably foreseeable that Britain's Got Talent would arrive in the UK. It seems very co-incidental that the respondent's registration was at the same time as America's Got Talent was beginning to become a success.
Further evidence of abuse could also be seen in the respondent's advertising tactics. It was claimed that he was taking advantage and exploiting the show's strong brand recognition to sell advertising on his site.
In light of all of the above, the expert decided that the registration was an abusive one. An important point to note is that the expert did stress that perhaps the registration in the first instance was not abusive but reference was made to the case of MySpace Inc v Total Web Solutions Limited which held that a domain name which has been used in an unobjectionable way can subsequently become an Abusive Registration where the use changes to something that is calculated to exploit the fame or goodwill of the complainants mark. This was the case here.
The result was that the domain name was transferred to Fremantle Media.
This case highlights that even if a website/domain name is being used legitimately, if an opportunity arises which could enable the holder to take advantage of his new-found 'luck', the holder would have to be careful in order to ensure that it does not fall foul of the DRS.