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Squatting not necessarily an abuse – brand owners beware!
29 April 2008
Brand owners have a number of possible ways of “recovering” from
cyber-squatters, domain names that incorporate their trade marks.
However, court proceedings, whether for trade mark infringement or
passing off, can be expensive and time-consuming. Brand owners,
therefore, often choose to employ the dispute resolution procedures
provided by bodies such as Nominet (which administers the “.co.uk”
domain).
The key to success under the Nominet procedure is the ability to
show that the domain name in question was either registered with
abusive intent or is being used in an abusive manner. In many
cases, this has not proved at all difficult. The Nominet panels
have readily found abuse where the cyber-squatter has registered a
number of well known marks as domain names, has made no use of the
domain name in question and/or has offered to sell the domain name
to the relevant brand owner for a large sum of money.
However, the recent decision of a Nominet Appeals Panel in a
case where the UK’s leading debit card brand owner, Maestro
International Inc was seeking to recover from a Mr Adams the domain
name “maestro.co.uk” shows that brand owners cannot necessarily
count on success in these circumstances.
In this particular case, all of the factors referred to above
were present to a greater or lesser extent. Moreover, the Appeals
Panel fully shared the scepticism of Maestro International about Mr
Adams’ contentions that he was unaware of the “Maestro” mark when
he registered his domain name and intended to use the domain for
“musical downloads, educational and tuition services”.
Nevertheless, both the original Panel and the Appeals Panel
declined to find that there had been any abuse and Mr Adams,
accordingly, kept his domain name.
At first sight, this is a worrying decision from the brand
owner’s point of view. What needs to be borne in mind though is
that, unlike in many of these cases, the debit card company was
seeking to protect a mark with a common dictionary meaning and one
which, if used in one of the fields allegedly intended by Mr Adams,
would probably not infringe the card company’s trade mark
rights.
In other words, it was easy to think of perfectly legitimate
uses of the domain name, even if the Appeals Panel was sceptical
about whether such uses were originally within Mr Adams’
contemplation. The situation was, therefore, different from ones
where an individual sought to register domain names incorporating
marks such as “forrest gump”, “big brother” or “beverly hills cop”…
as Mr Adams had previously done!
In conclusion, the Nominet and similar procedures will continue
to provide trade mark owners with the remedy that they require in
many cyber-squatting situations. The Maestro decision is however, a
warning to trade mark owners to consider carefully the extent to
which the circumstances do actually prove abuse before they
initiate a complaint. It is also a reminder to the owners of marks
with ordinary dictionary meanings (such as “maestro”) that it is
probably more important for them than for other brand owners to
register their mark in all of the key top level domains.
For more information or advice, please contact Mark Snelgrove
The content of this bulletin is provided for
the purposes of general interest and information. It contains only
brief summaries of aspects of the subject matter and does not
provide comprehensive statements of the law. It does not constitute
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