In Oasis Stores Ltd v J Dale [2009] DRS 06365, a Nominet Appeal Panel allowed the Respondent’s appeal against an expert’s decision, transferring the domain name oasis.co.uk to the clothing retailer. On evidence adduced for the first time on appeal, the panel found that by choosing to use as keywords with Yahoo! (and possibly also as metatags on its own website) text that corresponded to the domain name, Oasis had to some degree caused the parking page to which the domain name was linked to behave in the manner alleged to be abusive, i.e., displaying advertising for clothing retailers and links to Oasis’s website.

BACKGROUND

Oasis, which runs a chain of women’s clothes shops, owns a number of registered trade marks that comprise or incorporate the word “Oasis”. In October 2008, it filed a complaint with Nominet against the registration of oasis.co.uk. The domain name was registered at some time before August 1996 and at the time of the complaint the website was hosted by Imodo and displayed a number of “sponsored listings” for women’s fashion, including the Complainant’s products and those of others.

The Respondent failed to respond to the complaint and the expert duly ordered the transfer of the domain name to Oasis. The Respondent, who said that the posted copy of the complaint was sent to an out of date address and an emailed copy was overlooked, appealed.

APPEAL

The core of the Respondent’s defence in the appeal was that the particular use of the domain name that had occurred, in terms of the links displayed on the parking page hosted by Imodo, had been caused by the Complainant.

The Respondent argued that the Complainant was paying Yahoo! for the use of “keywords” comprising the text strings “oasis.co.uk” and “oasis.com” with the effect that the search results, if the relevant term was used for a search, were weighted in some way to the sites the advertiser selected to associate with such keywords; in this case, the Complainant’s own website. The parking page displayed advertising that was “extrapolated” from the search results that Yahoo! returned for the domain name in question. Thus it was the Complainant’s own behaviour that caused the parking page to start displaying links to which the Complainant objected.

There was no evidence (beyond the evidence of how the parking page behaved) that the Respondent purchased the domain name with any intent to target the Complainant’s business or to associate it with that business. The question of whether the registration was abusive therefore turned upon the use that had been made of the domain name since the Respondent acquired it by using it as a “parking page”. This in turn depended on how that parking page had behaved and what its contents had been.

The panel found the Respondent’s arguments compelling and found that the Complainant had not given a full and comprehensive rebuttal of them. Accordingly, the panel overturned the original decision.

COMMENT

Oasis appears to have fallen into the trap of merely denying the respondent’s allegations rather than rebutting them with evidence. It would appear that the clothing retailer really was the author of its own downfall. The decision should serve as a lesson to brand owners of the dangers of not ensuring that their IP portfolios, including domain names, correspond with their marketing strategies, in this case the buying of keywords from search engines like Yahoo! and Google. Failing to have a comprehensive set of domain names, in generic and country code top level domains, reflecting the brand and its trade mark registrations, can have unforeseen consequences, particularly where the mark consists of generic terms. Brand owners may argue that registrants should know that using domain names to resolve to parking sites that attract keyword generated advertising is likely to generate links to brands. Under paragraph 4.e. of Nominet’s dispute resolution policy, an expert is expected to take into account “the nature of the advertising links on any parking page associated with the Domain Name”. That, however, as demonstrated by this latest decision, is not a straightforward exercise.