The domain name has been owned by former multimedia consultant Garth Sumpter since he registered it in October 1995.
According to the ruling, Sumpter initially used the name in connection with his consultancy business, which traded as GAMEweb. But in May 2002 he incorporated a new company, Garth Associates Multimedia Entertainment (G.A.M.E.) and a few months later re-launched the web site as an on-line computer games store.
Two years later, following failed negotiations, the Game Group complained to Nominet, the registry for all domain names ending .uk.
According to The Game Group plc, the name GAME has been used by it and various predecessors in title since 1990, and in January 2002 it contacted Sumpter in order to discuss the possible purchase of the name. A price of £18,000 was agreed with Sumpter, according to The Game Group, but the transaction did not proceed.
The following month, the retailer says Sumpter offered to sell, seeking over £30,000. Discussions followed, but again a sale did not close. Sumpter denied ever initiating negotiations.
Almost a year later, The Game Group plc offered £100,000 for the domain. This was rejected by Sumpter, who advised that the domain, together with the company, were valued at £1 million, and that another high street retailer was interested in purchasing them.
The Game Group plc argued that it had rights in respect of the trade mark GAME, which is identical or similar to the disputed domain, and that Sumpter's use of the domain is abusive because it creates confusion in the mind of users.
It said the game.co.uk site was a competitor to its own web site at game.net, and said there had been no attempt by Sumpter to distinguish his business from that of GAME.
The retailer also argued that Sumpter had changed his use of the domain in response to its initial approach in January 2002, hoping to take advantage of its reputation or to sell the domain at an inflated price.
Sumpter denied all the allegations, pointing out that the domain had been registered in connection with a legitimate business web site, and had been used since 1995, until recently without objection from GAME. He had also traded under the name G.A.M.E., said Sumpter.
Sumpter argued that the domain was generic and descriptive and of such wide application that The Game Group plc could not reasonably expect to have exclusive use of the term. Furthermore, the generic nature of the term explains any confusion with regard to the domain, he said.
Sumpter also explained that the change of use of the web site related to the loss of one of his major business contracts, such that he needed another business opportunity, and preferably one that he could do from home.
The ruling
Nominet's sole panellist, Andrew Lothian, found that the retailer did have rights in the mark "GAME", despite the question over the generic nature of the term. Any confusion over ownership of the term, said Lothian, related to the fact that Sumpter had changed the nature of his business into one that competed with the complainant, and not the nature of the term itself.
"Clearly, on a simple analysis, the Complainant's business is not 'GAME'; it is the business of selling computer hardware and software, electronic games and related goods," said the panel. "In this sense, the mark cannot be wholly descriptive. A term such as 'ELECTRONIC GAMES' would be far more descriptive of the Complainant's business."
In addition, said Lothian, the use of the mark by the shop has rendered the mark distinctive of the goods provided by GAME among most of its customers. It is therefore not wholly descriptive of the business, even though some of the items sold by GAME might be described as games.
"This is a very difficult question," he explained, "and in the context of a mark like GAME, being a word in common usage, the Expert takes the view that a demonstration of very wide or extensive use is necessary but that the Complainant has narrowly met this requirement."
The panel also found that there had been an abusive registration.
The evidence provided by GAME of confusion in the mind of the public was compelling, and the notices shown on Sumpter's web site distinguishing it from GAME were not sufficiently prominent or ambiguous to avoid confusion, said the panel.
While Sumpter had legitimately used the domain prior to the web site re-launch in September 2002, this did not excuse a deliberate change "which the Respondent may be presumed to have known would conflict with and cause confusion detrimental to the business of the Complainant".
Accordingly, said Lothian, the domain name is not currently being used in connection with a genuine offering of goods. The registration was therefore abusive.
He added that he was "somewhat reluctant to transfer to the Complainant a domain name to which even the Complainant has ascribed values from £10,000 to £100,000 over recent years."
Nevertheless, as Sumpter had brought the situation on himself by changing the use of the domain in the knowledge of GAME's rights in it, the panel ordered that the domain be transferred.
Sumpter is appealing the ruling.