greengiant.co.uk (2008): A lack of a plausible explanation for registration of a domain name was fatal for the registrant.
Background
General Mills is a multinational company which operated in the UK for some 50 years. It owns the "Green Giant" along with a range of UK and Community trade marks.
Another.com is a company which owns a very large portfolio of domain names (in the thousands). It was founded in 1998. Its portfolio contained domain names comprising famous trade marks such as barbiegirl.co.uk and bacardi-and-coke.co.uk.
General Mills approached Another.com with a view to buying the domain name in dispute - greengiant.co.uk - but Another.com was not willing to sell for less than £10,000.
General Mills filed a domain name complaint against Another.com using Nominet's Dispute Resolution Service.
The initial domain name dispute decision
Another.com did not respond initially to the domain name complaint.
To win the domain name dispute, General Mills had to prove on the balance of probabilities that it had rights in a name that was identical or similar to the domain name and that, in the hands of Another.com, the registration was an abusive registration.
The expert in the first instance (ie initial) domain name dispute case felt that he had limited evidence about the motive of Another.com's when it registered the domain name. However, he pointed out that the domain name was identical to General Mills' trade mark, that it was exclusively referable to that brand, that there was no obvious justification for the adoption of that name and that the registrant of the domain name had not come forward with an explanation for having chosen that name. In those circumstances it was reasonable to infer that the domain name was registered abusively.
Accordingly, the expert decided in favour of General Mills.
The domain name dispute appeal
Another.com then appeared and filed an appeal notice, stating that it had not received the original complaint. The reason its registrant information had not been kept up to date was the result of a good faith clerical error.
The sole issue in the case was whether Another.com had registered the disputed domain name specifically to target General Mills' "Green Giant" brand.
Another.com argued that it was not aware of the brand when it registered the domain name and that it selected the domain name as part of a group of domains with gardening and environmental connotations.
The appeal panel felt that it was inconceivable that Another.com had not heard of General Mills and/or its brand. The panel found implausible the claim by Another.com that it had registered the domain name for its gardening and environmental connotations. It was relevant that Another.com had failed to explain in detail why it did register the domain name and that it had previously sought some £10,000 from General Mills for the domain name based on its "rarity desirability", the basis for which was also not explained. The panel also considered that the domain name was part of a pattern of registrations by Another.com of domain names incorporating famous trade marks owned by others.
The panel, therefore, agreed with the expert that the domain name was an abusive registration and ordered that the domain name be transferred to General Mills.
"Take home"
This case was relatively straightforward. The domain name was a distinctive one, very closely related to General Mills' high profile brand. And, as in so many domain name disputes, a key factor was the credibility or otherwise of the registrant's explanation of its motive in registering the domain name. Here, the appeal panel considered the explanation implausible and the outcome was inevitable.
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