oasis.co.uk (2009): Oasis loses despite use of domain name for sponsored fashion links
Introduction
Seemed like a routine Nominet UK domain recovery case? Oasis is a UK high street women's clothing chain, trading since 1991. Mr Dale acquired oasis.co.uk in 2006. The domain was later used for sponsored links to women's fashion websites. Yet Oasis lost. Why? This recent appeal decision illustrates some of the dangers for trade mark owners which lurk in the Nominet UK domain name dispute recovery process.
Mr Dale's belated appearance
Oasis won the initial case under Nominet's DRS. Mr Dale had not submitted a response. However, he surfaced shortly afterwards saying that the complaint had originally been sent to his old address and he had just found about the decision. He filed an appeal. (The DRS allows for appeals to a three-person panel at a cost of £3000.)
Admission of new evidence
Unusually, the appeal panel allowed Mr Dale to submit additional evidence - effectively his response to the complaint. This was in the interests of justice as his original failure to respond was careless, rather than intentional, and it would be too harsh to penalise him by unjustly depriving him of the domain name. (By then, the appeal panel had already found for Mr Dale on the merits.) Having to pay the appeal cost was punishment enough.
Mr Dale's motive
Mr Dale claimed that he had no interest in women's clothes shops and hadn't heard of Oasis when he bought the domain for £4,000. He said he intended to use it for a bingo or financial services website. Often domain name dispute panels are sceptical of such claims but Mr Dale produced proof of actual discussions about use of the domain name for financial services. This, combined with the fact that the domain was a common English word (unlike say "kodak.co.uk"), led the panel to accept that Mr Dale didn't register the domain to target Oasis and that the acquisition of the domain name was not an abusive registration, the Nominet equivalent of bad faith.
Abusive use
However, that wasn't the end of the case. Under the DRS, unlike the UDRP, later abusive use will suffice, even where the domain name was genuinely acquired. Was it abusive to use the domain name for sponsored links to women's clothing sites? Nominet's policy says that parking pages are not of themselves abusive. The panel has to consider the nature of the domain name, the nature of the links and that the registrant is ultimately responsible for the domain.
How parking pages work
The appeal panel said that it is dangerous to draw conclusions simply by looking at parking pages - some generate content automatically but others depend on parameters set by the owner. Where parking pages are an issue, the parties should explain in detail how they work. But neither party had done so here.
Oasis at fault
Mr Dale claimed that the original parking page had contained only very general links. He produced a statement from the parking company suggesting that women's clothing links only appeared because, in an unusual reversal, Oasis was itself separately using the exact domain name "oasis.co.uk" (not of course owned by Oasis) as a keyword in its own online marketing, ie Oasis were targeting users searching specifically for Mr Dale's domain name. The panel felt that this claim by Mr Dale, albeit brief and lacking in detail, was worthy of consideration. Yet Oasis had simply dismissed it as bizarre, fanciful and unproven. This, said the panel, was unsatisfactory. Oasis could easily have provided a statement saying that it hadn't used the keyword "oasis.co.uk".
Panel visits Oasis' own website
The panel went further and actually checked the meta-tags on Oasis' own website (oasis-stores.com). Sure enough, these included "oasis.co.uk". This confirmed to the panel that Oasis probably was using the domain name to attract traffic to its own site.
Dénouement: Because of the "either ... or" test (ie abusive acquisition or abusive use) under the DRS, Nominet UK domain name dispute panels have had to assess what turns a genuinely-acquired domain name into an abusively-used one. The approach has been that registrants are only liable if they actively exploit their position by reference to the trade mark. The panel accepted Mr Dale's claim that Oasis' own actions had led to the appearance of women's fashion links on oasis.co.uk. Not only had Mr Dale not actively exploited his position, Oasis' own actions had caused the very behaviour which they complained about. So Oasis lost the appeal.
"Take home"
It is risky to assume that any Nominet UK DRS case is a "pushover". On the face of it, this case had looked like a safe bet for Oasis. Where parking pages are involved, it is in the interests of both parties to provide detailed evidence explaining how those pages work. If necessary, seek information from the parking company. Trade mark owners shouldn't assume that a registrant will necessarily be responsible for the content of a domain parking page and complainants should obviously be wary of including in their online marketing strategy domains which they don't own, no matter how strongly they consider that those domains are rightfully theirs.
And finally: Even if you win an uncontested DRS case first time round, don't start celebrating until the appeal deadline has expired!
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.