The group, run by former teenage dot.com star Benjamin Cohen,
registered the domain on 7th November 2000, and has since used it
to redirect users to a succession of web sites owned by the group –
including, for four days last November, napster.co.uk.
According to the Nominet ruling, that redirection followed
discussions between the CyberBritain and Napster about an affiliate
programme, and included an enquiry by Cohen as to whether the music
download company would be interested in acquiring the domain.
Napster said no.
Apple applied to register iTunes as a
UK
trade mark
on 24th October 2000, an application that was published on 6th
December 2000. It launched the iTunes music service in the
US
on 28th April 2003, and in the
UK
on
15th June 2004.
Sole panellist Claire Milne found that Apple had clearly
demonstrated rights in the name iTunes, and that CyberBritain had
not used the domain for anything other than redirection or sale
purposes. Nor, she added, had the
UK
firm used the
name "itunes" as a name "in any way not associated with
'itunes.co.uk'".
On the question of whether CyberBritain's ownership of the
domain was an "abusive registration", the panellist decided that,
on a balance of probabilities, it was.
CyberBritain had not, on the evidence provided, registered the
domain primarily for the purposes of making money from the
subsequent sale or transfer of the domain, nor had an offer to sell
the domain to Apple for the price of £50,000 taken advantage of the
computer giant, the offer having been made at the request of Apple
in the first place.
But the panellist said that
CyberBritain had also offered to sell the domain to Napster, one of
Apple's competitors, and this did take advantage of Apple's rights
in the "itunes" name. She explained:
"I consider that this took
unfair advantage of the rights of the Complainant: any value in the
domain name for the competitor would derive more from its
association with the well known name of the Complainant than from
the little known name of the Respondent. I consider that the offer
to sell the domain name to the competitor was also unfairly
detrimental to the rights of the Complainant, because if successful
it would have equipped a competitor with the name."
CyberBritain's actions and
statements led the panellist to believe that if the name was
allowed to remain with the group then "people could well be
confused and business could well be lost by the Complainant in a
manner that took unfair advantage of, or was unfairly detrimental
to, the rights of the Complainant".
She therefore ordered that the domain name be transferred to
Apple.
According to reports, Cohen is considering whether to appeal the
ruling, either through Nominet or to the High Court.
