The fact that the myspace.co.uk address led to a 'parked' page
with adverts for social networking sites including MySpace was
taken to be evidence of an abusive registration and the domain name
was given to MySpace.
The ruling was made by independent expert Antony Gold as part of
the arbitration process run by the .uk domain registry,
Nominet.
Total Web Solutions (TWS) of Stockport had registered
myspace.co.uk in 1997 and used the address to offer mini websites
to subscribers and email services. It said that though it no longer
offers the mini websites it still provides email services to 18
subscribers at the address.
The arbitrator found, though, that it had changed the way that
it used the address, subscribing to a system which put
keyword-related adverts on to the page. Those ads related to
MySpace.com and to social networking, meaning that TWS was
profiting unfairly from its association with MySpace.
For that reason, Gold ruled that the domain name should pass to
MySpace.
In order to gain control of a domain name under the dispute
resolution process a company has to show that it has legitimate
rights in the domain name and that the registration of that domain
by the other party is an abusive one.
The two sides in the dispute disagreed over whether the
registration was abusive. MySpace said that the publishing of
adverts that could confuse users was an abuse.
TWS, though, said that a previous ruling backed its practices.
It quoted the panel in the case over the name verbatim.co.uk as
saying: "the Complainant must satisfy the Panel, as an opener, that
the Respondent was aware of the existence of the Complainant or its
brand at the date of registration of the Domain Name or at
commencement of an objectionable use of the Domain Name”.
MySpace argued that TWS only started using the page for
advertising once it had been acquired by Rupert Murdoch's News
Corporation and therefore come to the attention of the world.
"Section 1 of the Policy defines an abusive registration as a
Domain Name which…has been used in a manner which took unfair
advantage of or was unfairly detrimental to the Complainant's
rights," it argued.
TWS said that it had used the page for advertising previous to
the News Corp acquisition. "The Respondent has not done anything
other than to continue the uses or its domain name myspace.co.uk
which it commenced in July 2004 or earlier, before it knew of the
Complainant and before it acquired any rights in the descriptive
name “MySpace” in the UK
Though TWS recognised that the nature of the advertising
changed, it said it did not control that, and that it should not be
punished for the popularity of MySpace.
"The fact that the adverts shown in 2004 did not include adverts
associated with the Complainant proves that the Complainant was not
well known and was not known to the Respondent when it started
using the site for sponsored pay per click links," said TWS in its
submission.
"The choice of the adverts on the site is determined by
algorithms linked to the search terms used by the internet
community as a whole. Internet users were not searching for the
Complainant or related services in 2004 when the pay per click use
started - otherwise such adverts would have been automatically
selected by the software for display on the Respondent’s page at
that date. Analysis of the pay per click ads over a period of
around 18 months shows a gradual increasing awareness of the
Complainant - to the point where the adverts are now dominated by
things related to the Complainant."
"However, this is not a change of use by the Respondent - merely
an automated reaction to the algorithm to the increased notoriety
of the Complainant. Such ongoing use cannot become abusive merely
as a result of the junior user of the mark becoming well known," it
said.
Gold said that it was not relevant that TWS did not select
specific adverts, that it owned the pages displayed and must be
responsible for them and the income it gained from association with
MySpace.
"This advantage and the use made of the Domain Name by the
Respondent is unfair," he ruled. "The income the Respondent is
deriving from its pay per click links at the site of the Domain
Name derives in part as a consequence of it being able to trade off
the reputation of the Complainant. Accordingly the Domain Name in
the hands of the Respondent is an Abusive Registration."
TWS had sought up to £220,000 in return for the domain when
contacted by MySpace. Gold accepted that this in itself was not
evidence of an abusive registration. He also rejected MySpace's
claims that TWS engaged in registering names of a series of trade
marks.
