maestro.co.uk (2007): Convincing evidence is needed to show that a domain name consisting of a single generic word is abusive.
Background
Maestro International Inc, a US corporation and is a subsidiary of Mastercard, operates the "Maestro" debit-card brand.
Mark Adams engages in web design and domain name registration services. Mr. Adams registered a number of domain names in 2004 and 2005 which included well known trade marks such as popidol4.co.uk and bigbrothertv.co.uk. Mr. Adams registered the domain name maestro.co.uk in April 2006 and connected it to his main trading website at 3dweb.co.uk.
In July 2006, a representative of Maestro International approached Mr. Adams to see if he would sell the domain name and for how much. Mr. Adams responded that he would only sell for an exceptional amount because he planned to develop the domain name. Various communications followed, culminating in request by Mr. Adams for Maestro International to make him their best offer.
In April 2007, Maestro International's solicitors sent a cease and desist letter to Mr. Adams demanding that he transfer the domain name to Maestro International. Mr. Adams denied infringement and claimed that he was going to use the domain name for music downloads and educational and tuition services. In a further letter Mr. Adams stated that he registered the domain name without knowledge of Maestro International but instead had the generic dictionary definition in mind.
Maestro International filed a domain name complaint against Mr. Adams using Nominet UK's domain name complaint procedure.
The initial domain name dispute decision
As with all domain name disputes under the Nominet UK DRS Policy, Maestro International had to prove that it had rights in respect of a name or mark which was identical or similar to the domain name and that the domain name, in the hands of Mr. Adams, was an abusive registration.
Mr. Adams did not respond to the complaint but nonetheless the expert in the initial domain name complaint found in favour of Mr. Adams. Maestro International appealed under Nominet's appeal procedure. Mr Adams filed a response to the appeal.
The domain name dispute appeal
There was no dispute that Maestro International had trade mark rights in the term MAESTRO. The only issue for the appeal panel, therefore, was whether or not the domain name in dispute was an abusive registration.
The panel said that in this case, all depended on whether Maestro International could satisfy the panel on the balance of probabilities that Mr Adams registered the domain name with Maestro International's trade marks in mind.
Maestro International argued that Mr Adams denial of knowledge of its famous trade marks was implausible. Also, Mr. Adams had not provided any evidence of his intention to use the domain name for musical downloads, education and tuition services and he was in the habit of registering domain names containing well known trade marks of others and the domain name maestro.co.uk was part of that abusive pattern.
Knowledge of the trade mark not enough where domain generic
The appeal panel decided that although Mr. Adams could be expected to have known of Maestro International's trade mark when registering the domain name, that did not mean that he did actually have it in mind. But even if he had been aware of it, that was not conclusive. If a trade mark is a generic dictionary word, there has to be more than just knowledge. Otherwise trade mark owners could the use of monopolise generic dictionary words in domain names.
While Mr Adams had originally "talked up" the domain name, this was entirely predictable behaviour from someone trying to sell a domain name and it was therefore not very significant that he had failed to produce evidence of his supposed plans for the domain name.
And, although Mr Adams owned 12 domain names comprising third party trade marks, the domain name maestro.co.uk was not part of that pattern. The other domain names were either very famous marks or unusual combinations of words - unlike "Maestro" which was known for its common meaning in English as much as anything else. Also those other domain names were registered in a different time period and they only a very small part of Mr Adams's portfolio of domain names.
The Nominet appeal panel concluded that Maestro International had not proved on the balance of probabilities that the domain name was an abusive registration.
"Take home"
Under the Nominet UK Dispute Resolution Service, where a domain name consists of a single ordinary English dictionary word which hasn't been displaced by a powerful secondary meaning (ie the name is so well known that it has become strongly associated by the public with the relevant trader), any evidence of abuse will have to be convincing to persuade a panel that the domain name is an abusive registration. Also, the fact that a registrant has other "dodgy" domain names in its portfolio is irrelevant unless the domain name in dispute can be said to be part of that pattern.
For a free initial chat and more information about our domain name legal advice and services, call Adam Taylor of Adlex Solicitors on +44 (0) 207 317 8404 or email.