myspace.co.uk (2008): MySpace fails to recover myspace.co.uk despite its use for social networking links.
Background
MySpace, Inc was founded in 2003 and is the owner of the well known MySpace social networking websites. News Corporation bought MySpace in July 2005. This was well-publicised.
Total Web Solutions is a provider of internet services. It registered myspace.co.uk - the domain name in dispute - in August 1997 with a view to giving its clients their own web space and email address. It registered bigspace.co.uk for the same purpose.
The domain name resolved to Total Web's business page at totalweb.co.uk between 1998 and 2000. By December 2000, myspace.co.uk hosted over 250 microsites.
In November 2003, or earlier, Total Web resolved bigspace.co.uk to a holding page at Sedo (a domain parking service which helps cash in on traffic to a domain by pay per click advertising). In July 2004, or earlier, Total Web connected myspace.co.uk to the same Sedo parking page at bigspace.co.uk.
At some point between June and August 2005, Total Web told Sedo to set a parking page dedicated to the domain name myspace.co.uk. From October 2005, the page included links to MySpace and other social networking websites.
MySpace made two approaches to Total Web in an attempt to buy myspace.co.uk. Total Web asked for between $100,000 and $430,000. In May 2007, a cease and desist letter was sent to Total Web demanding transfer of the domain name. Total Web simply wrote back reiterating a previous offer for £225,000 plus VAT.
The domain name dispute appeal
The original expert found in favour of MySpace. Total Web appealed the original domain name dispute decision to a Nominet appeal panel.
Trade mark rights
There was no dispute that MySpace had rights in respect of a name or mark which was identical or similar to the domain name, the first factor which MySpace had to prove. Total Web argued that the name was wholly descriptive of the MySpace's business (an exclusion under the old version of Nominet's DRS Policy) but the appeal panel rejected this saying that the name was at most "mildly suggestive".
Abusive registration
The other factor for MySpace to prove was whether the domain name in dispute was an abusive registration. There are two kinds of abusive registration: (1) registration of the domain name with abusive intent or (2) abusive use of the domain. The domain could not have been used with abusive intent because Total Web registered it years before the MySpace business was founded.
The only issue, therefore, was whether the domain name had been used abusively. MySpace argued that, when Total Web became aware surrounding the News International takeover of MySpace in July 2005, it changed use of myspace.co.uk to capitalise on the fame of the MySpace mark. Total Web said that it did nothing to change its use since it became aware of MySpace. So the appeal panel looked closely at use of myspace.co.uk before and after the acquisition.
The appeal panel observed that the domain name had been connected to Sedo parking pages from July 2004 and that the links on the pages were at all times generated automatically by Sedo software.
While myspace.co.uk was switched from the bigspace.co.uk parking page to its own parking page, resulting in content inspired by 'myspace' rather than 'bigspace', the appeal panel was not satisfied from the evidence before it that the first use occurred after the July 2005 publicity.
Automated sponsored links
What about the automated changes to the sponsored links? The Nominet appeal panel pointed out that the content of parking pages varies depending on the behaviour of search engine users. It was therefore not surprising that after the publicity surrounding the 2005 takeover, the links on the page related more and more to MySpace and other social networking sites.
If registrants acquired domains before complainants acquire trade mark rights, Nominet DRS panels have generally held that the registrants can keep their domain names despite customer confusion and even demand a high price to sell the domain name to the trade mark owner in recognition of its increased value. A problem only occurs when the domain name registrant does something that takes unfair advantage of its position.
The appeal panel stated that domain names are still registered on a first come first served basis. The panel was, therefore, unwilling to penalise Total Web for its good (or bad) fortune in registering in good faith a name which later became famous - as Total Web had done nothing actively to exploit its position.
Abusive registration not the same as trademark infringement or passing off
The appeal panel also rejected MySpace's argument that Total Web had been guilty of trademark infringement or passing off. It observed, as has been stated in many cases under the Nominet DRS Policy that abusive registration is a different concept, albeit that there may be some overlap.
Accordingly the appeal panel allowed the appeal by Total Web, which was permitted to keep the domain name.
"Take home"
If you are a trade mark owner addressing a domain name which predates your brand, you do not have a straightforward case under the DRS. You must find some evidence that the registrant has actively exploited your brand. A parking website with sponsored links relating to your trade mark may not suffice.
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.