Out-Law News 3 min. read
10 Jan 2008, 9:16 am
The dispute resolution service for .uk registry Nominet refused to overturn a previous ruling which let Mark Adams keep the domain. Adams is a Milton Keynes-based web designer and domain name dealer.
Maestro argued that Adams was responsible for a series of domain name registrations that were close to other people's brands, and that his registration of maestro.co.uk was abusive.
The appeal panel ruled that it did not prove the case that the registration was abusive, and that because maestro is a normal word with a dictionary definition it could not monopolise its use in domain names just because it also happened to be one of its brands.
Maestro argued that "in light of the evidence submitted of registrations by the Respondent of domain names including well known trade marks of third parties, the [original case's] Expert was wrong … and he should have considered the complaint in the overall context of a Respondent who has a record of registering domain names which include third party trade marks," it said in its submission.
"All of the domain names listed in the complaint are either identical to or incorporate famous third party trade marks in which the Respondent has no legitimate rights and therefore constitute a pattern of registrations," argued Maestro.
Maestro said that the Expert in the original hearing had misconstrued the rules governing his decision. "The Expert clearly had in mind that it was necessary or at least of relevance that there was no evidence of 'findings' of abusive registrations. This in not the correct test to be applied under the Policy, and lead to the Expert incorrectly dismissing this ground of complaint. The correct test is whether 'The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.' Had the Expert applied the correct test he would have found that the registration of the Domain Name was abusive," said the Maestro case.
Adams argued that his other registrations did not prove any intent in relation to the maestro domain name, and that all he had done was register a generic word. He told the panel that he plans to use maestro.co.uk "for music downloads, educational and tuition services."
The panel said it had just one question to answer: "in the particular circumstances of this case, all depends upon whether the Complainant can satisfy the Panel on the balance of probabilities that the Respondent registered the Domain Name and/or has used the Domain Name with the Complainant in mind."
The panel said that it doubted Adams's claims that he had never heard of the Maestro brand and that he planned to launch a music business. But it also said that it could not identify a pattern in his registrations.
"The names and trade marks are 7 in number, namely: GOLDEN ARCHES, BIG BROTHER, BEVERLY HILLS COP, FORREST GUMP, NET NAMES, PHONE NAMES and POP IDOL," it wrote in its ruling. "The 12 domain names identified certainly represent a pattern; but is the Domain Name part of that pattern? On the evidence before it, the Panel does not believe that it is."
"If it were the case that the Respondent’s portfolio comprised the Domain Name and the objectionable domain names cited in the Complaint and no others, the Panel might have been inclined to draw the inference contended for by the Complainant, but, as the Respondent is a domain name dealer, manifestly that is not the case and the Panel is not prepared to draw that inference," it wrote.
The panel said that Adams's case was helped by the fact that the word in question was a generic one.
"Where a domain name is a single ordinary English word, the meaning of which has not been displaced by an overwhelming secondary meaning, the evidence of abuse will have to be very persuasive, if it is to be held to be an abusive registration under the DRS Policy," said the three-member panel.
"In this case the Respondent has not done himself any favours by having in his portfolio some obviously objectionable names and by making what appear, in the absence of any supporting evidence, to be disingenuous, self-serving claims in respect of the domain name."
"However, it is up to the Complainant to prove, on the balance of probabilities, that the registration is abusive. While the Panel has not found this an easy case, the Panel is not satisfied on the evidence before it that the Domain Name in the hands of the Respondent is an abusive registration," it said.
