Background to the domain dispute
Total Web Solutions Ltd (TWS) registered the domain "myspace.co.uk" to provide clients with web space and email addresses. TWS made use of the domain in this way from 1998 until 2000 during which time the domain resolved to its business webpage at totalweb.co.uk. The business of MySpace Inc, which was founded in 2003, consists of social networking websites which allow users to personalise a web page profile, upload music and photographs and develop a network of friends and other contacts.
From July 2004 TWS placed a holding page at myspace.co.uk which contained automatically generated links based on search engine results that directed internet users to a variety of other websites. In July 2005, MySpace was acquired by News Corporation Inc and from August 2005 myspace.co.uk resolved to a parking site containing links to the genuine MySpace website and other unrelated networking websites, including those of an x-rated nature. TWS still provided 18 users with email facilities at the time of this dispute. MySpace made two attempts to buy the domain name from TWS but the sale price demanded reached $430,000.
In January 2004 MySpace had 22 million members and on 12 December 2006, MySpace became the proprietor of a US registered trade mark for the word mark MYSPACE. In May 2007, MySpace wrote a cease and desist letter to TWS demanding a transfer of the domain myspace.co.uk but the parties did not come to agreement and the dispute was taken to Nominet.
This case considered the type of activity by a Registrant which might render an otherwise genuinely registered domain an "abusive registration" entitling the Complainant to an order for transfer.
An abusive domain name registration under Section 1 of Nominet's Dispute Resolution Policy is one which was registered or otherwise acquired in a manner which took advantage of or was detrimental to the Complainant's rights at the time of registration/acquisition of the domain OR which has since been used in such a manner. Previous Nominet decisions have held that the Complainant needs rights at the time they make their complaint, not at the date of registration of the domain name. Consequently it is possible for a domain name to become an abusive registration if used in a particular manner despite, the fact that it was registered prior to the Complainant's rights coming into existence.
MySpace argued that TWS were clearly trying to take advantage of its rights and the ensuing public confusion to generate increased income. The Expert agreed that there had been a marked change in the format and content of myspace.co.uk following the acquisition of MySpace by News Corporation Inc in a way which enabled TWS to take advantage of the Complainant's rights. As a result the Expert ordered that the domain be transferred to MySpace.
Other factors that were taken into consideration in reaching this conclusion were:
- The identical nature of the domain and trade mark. When comparing domain names to trade marks, you do not take the first and second levels of the domain into account i.e. "myspace.co.uk" and the trade mark "MYSPACE" are to be compared as "myspace" and "MYSPACE".
- Is the name wholly descriptive? In this instance the Expert held that it is not possible to tell exactly what type of business is carried out under the name MYSPACE so it is not purely descriptive.
- Seeking a substantial sale price for a domain is not necessarily indicative of an abusive registration. A domain legitimately registered and used can be offered for sale at a commercial value.
- Evidence. The Expert set more store by screen shots of the web pages in dispute than the statistical data relating to hits to web pages. The facts that the links were generated by an algorithm and that the holding page was dealt with by a third party on behalf of TWS were irrelevant as the Registrant was held to be ultimately responsible for the web page content.
- Consumer confusion need not be established. The Expert acknowledged that it can be difficult to obtain actual evidence of confusion but that this was not required. It was enough to show that at least part of TWS' pay per click revenue could be attributed to its taking advantage of the domain name to trade off the reputation of MySpace.
Brand owners will be interested to see that ownership of domains incorporating their brand names may be challenged as a result of later non-genuine use even where domains were originally legitimately registered. It may be worth monitoring sites at legitimate registrations to see if the use of such domains changes to take advantage of your brand. Brand owners may also want to consider a watching service or pre-emptive registration of domains in advance of new brand developments or product launches.
It should be noted that this approach contrasts with that taken under WIPO's Uniform Domain Name Dispute Resolution Policy in which it is essential to be able to show bad faith in current use of the domain and in the original registration. A recent example is the failure of The Economist to obtain a transfer of "theeconomist.com" where it was unable to establish on the balance of probabilities that the original registration was made in bad faith