The recent Nominet decision involving MySpace should cause a collective sigh of relief from those brand owners with valuable internet businesses. It highlights that a brand owner may be able to secure the transfer of a domain name being used abusively even where the domain had been registered by the other party in innocence long before the brand owner had established its business.
In this case decided by Nominet’s UK Dispute Resolution Service (MySpace Inc. v Total Web Solutions Limited, Case DRS No. 04962, January 2008) the domain name myspace.co.uk had been registered in 1997 by the respondent, a company that has registered thousands of domains for its customers, and currently registers around 2,000 new domains per month.
MySpace was founded in 2003. From July 2004 the respondent had placed a holding page at the domain name containing links (generated automatically via standard software) to other websites in order to derive revenue from the resulting traffic. From summer 2005, following the purchase of MySpace by News International Inc, the respondent’s use of the domain name changed, with it resolving to a parking site that contained a number of links to MySpace and/or other social networking sites, generating revenue for the respondent as the success of the MySpace social-networking site grew. The respondent had also at various times offered to sell the domain to MySpace for six figure sums.
After finding that MySpace does have rights in the name “myspace”, the Expert found that the respondent seeking substantial payment in return for the domain name did not of itself make it an abusive registration, nor did the respondent’s activities pre 2005. However, the change in use after August 2005, in which the respondent had deliberately sought to exploit the popularity of MySpace as it traded off the reputation of MySpace, did make it an abusive registration. Accordingly he ordered that it be transferred to MySpace.
The decision should further encourage brand owners that Nominet’s Dispute Resolution Service represents an effective and relatively swift and inexpensive means of curtailing abusive registrations.