The dispute arose in September 2002, when John Walker registered the domain johhniewalker.me.uk for his web site. The site, which offered web development tutorials, web marketing and search engine submission tips, appeared to be a mirror site for another site, www.321WebLiftOff.net, which was first registered by the Respondent on 8th August 2000.
According to Nominet, the site contained "several references to alcoholism, alcoholics anonymous and a representation of an apparently intoxicated man walking across the screen".
Guinness accepted that the registrant's name was John F. Walker. It doubted, however, that prior to the registration he was commonly known as Johnnie, as opposed to John, and that, even if he was, it was more likely to be with the more common spelling of "Johnny".
The company submitted evidence that the auto-reply from Mr Walker's e-mail address was signed 'John Walker' and that the City of Norwich Business Directory listed his business as Norvic Software and its Director as "Mr John F. Walker".
The company alleged that two days after the registration of the domain, Mr Walker contacted Diageo, the parent company of Guinness, advising that he owned johhniewalker.me.uk and that the site was available for advertising.
Guinness also pointed out that it has not licensed or otherwise permitted Mr Walker to use any of its trade marks or any domain name incorporating its marks. The company claimed that Mr Walker "not only was well aware of [Guinness's] mark, but he also must have been aware of the deception and confusion that would inevitably follow if he used the domain name".
Mr Walker rejected the allegations, claiming that, since the name on his birth certificate is John Francis Walker, he is entitled to use the name Johnnie Walker, a nickname by which he has been known since he was a child.
He also denied that he was infringing the trade marks of Guinness and claimed that the .me.uk domain name is intended for use by natural persons with a UK connection, and not by corporations based in the Netherlands.
Nominet UK took into account the fact that Guinness currently holds four registered UK trade marks in the term 'Johnnie Walker', as well as five additional UK trade marks incorporating the term. Nominet found that the oldest of these marks dates from 30 November 1908, clearly pre-dating Mr Walker's domain registration.
Nominet agreed with the arguments put forward by Guinness and decided that under the rules of its Dispute Resolution Policy and Procedure the registration of johnniewalker.me.uk was abusive.
Despite its finding, Nominet ruled that the domain name in question should not be transferred to Guinness, as the company had requested.
Nominet said:
"If a corporation such as the Complainant takes registration of a Domain Name within the .me.uk SLD without the specific agreement of a natural person who shares this (or a suitably similar) name the corporation will be deemed to hold an abusive registration... In the instant case, were the Expert to transfer the Domain Name...without the agreement of a natural person known as John or Johnnie Walker it would therefore create an abusive registration."
Nominet therefore directed that johnniewalker.me.uk should be suspended.
Nominet's decision is available here
