Overturning the Expert’s decision, on 18 April 2008, the Nominet Appeal Panel ruled in Myspace Inc v Total Web Solutions Ltd (DRS 04962) that the myspace.co.uk domain name registered by Total Web Solutions does not have to be transferred to MySpace Inc, the owners of the hugely popular social networking website myspace.com, as the registration of the domain name was not abusive under the Nominet Dispute Resolution Service (DRS) Policy.
The Respondent, Total Web Solutions (TWS), had supplied internet services since it was established in 1995 and managed around 80,000 domain names for its customers, registering around 2000 new domain names each month. TWS registered myspace.co.uk (the Domain Name) in August 1997 in order to provide its clients with a cheap and easy homepage and email addresses. It also registered and used the domain name bigspace.co.uk along with the myspace.co.uk domain, as, according to TWS, it wanted to give clients their own web space and email addresses.
In or around November 2003, TWS placed a holding page at a Sedo operated, revenue earning website connected to bigspace.co.uk and, in July 2004, it connected the Domain Name to the Sedo bigspace.co.uk site. This holding page contained links to other websites. During the summer of 2005, TWS requested that Sedo change the “bigspace.co.uk” arrangement and set up a parking page dedicated to the Domain Name. In October 2005, the Sedo parking site to which the Domain Name related contained links to Myspace and/or other social networking related links. The links on the site included “social networking”, “photo sharing”, “chat forum”, “xxxmovies” and “sex”, “MySpace – Official Site”, “Make Friends Now Dammit”, “Myspace Friend Adder”, “Social Network Software” and “Social Networking Sites”.
The complainant, MySpace Inc, is the owner of the MySpace business founded in 2003, which is essentially a series of interlinking social networking websites with over 195 million user profiles and, on average, over 300,000 new registrations each day. In the United Kingdom alone there are over 10 million users. MySpace Inc was purchased in July 2005 by News Corporation and MySpace UK was officially launched in May 2006. MySpace Inc is also the owner of the U.S. trade mark MYSPACE, registered in December 2006.
On two separate occasions, Myspace attempted to purchase the Domain Name from TWS with sale price demands by TWS varying from a very reasonable U.S.$100 to over U.S.$400,000.
Myspace filed an initial complaint with Nominet stating that the registration was an abusive registration under the DRS policy. The Expert found against TWS as he believed that TWS had knowledge of Myspace prior to Myspace filing its complaint in August 2007 and had purposely changed its use of the Domain Name in order to take advantage of the “Myspace phenomena”. This use by TWS in combination with the trade mark rights owned by Myspace was, in the Expert’s view, enough to render the registration by TWS abusive.
TWS filed an appeal to which they also attached a Formal Complaint claiming that the case had been unfairly handled by Nominet staff and that Nominet staff had failed in their duty of neutrality and tried to cover it up. TWS further repeated their arguments raised in the initial complaint, namely that
- The name was wholly descriptive.
- They had registered the Domain Name long before Myspace existed.
- They had done nothing to change the use of the Domain Name since they became aware of the existence and notoriety of Myspace.
- The Expert was wrong to find that there was a change of use by TWS of the Domain Name in 2005.
Myspace’s response largely repeated its original arguments that it had registered rights in the “myspace” name by virtue of its trade marks, and that TWS had changed its activities in using the Domain Name once it became aware of the prominence of Myspace during the summer of 2005. Even though the Domain Name may have been directed to a Sedo parking site for some time, the content of the site itself had changed substantially at the time that Myspace began to reach global popularity.
The Appeal Panel immediately dismissed the Formal Complaint by TWS that Nominet had acted inappropriately and held that such a Formal Complaint would be of no relevance to the merits of the appeal. The Panel also disagreed with TWS that the term “myspace” was entirely descriptive of the Myspace business. However, the Panel said that it did not consider TWS’ registration to be abusive. According to the Panel, Myspace had not established to its satisfaction that TWS‘ registration was being or was used in an abusive fashion. Myspace argued that TWS’ use of the Domain Name was or had been abusive, basing their arguments on the belief that as soon as TWS became aware of the publicity associated with the acquisition of Myspace by News Corporation in July 2005, TWS changed what had hitherto been an innocent, unobjectionable use of the Domain Name to a use calculated to exploit the fame of the Myspace trade mark.
The Appeal Panel reviewed in detail the use of the “parking site” at Sedo by TWS but Myspace was unable to prove to the Panel that TWS’ activities were abusive, despite the Panel’s “grave suspicions” that the timings and actions by TWS were just too much to be coincidence. Ultimately, the Appeal Panel held that registration of domain names is on a first-come -firstserved basis, therefore, there should not be a duty on a registrant, who has merely had the good fortune to register in good faith a name that subsequently acquires notoriety.
The Panel was not satisfied on the evidence before it that the Domain Name in the hands of TWS was an abusive registration within the terms of the DRS Policy. The Appeal Panel believed that, ultimately, the best and most just result would be for Myspace to litigate the issue in court.