t-home.co.uk (2009): Registrants who offer to sell domain names to trade mark owners for vast sums of money are not necessarily cybersquatters
Background
In September 1999, Lammtara Multiserve Limited registered the domain name in dispute - t-home.co.uk - along with various other 't-' prefixed domain names.
In March 2002 Deutsche Telekom AG approached Lammtara and bought t-email.co.uk (and another similar domain name) for €100,000. Four months later, Lammtara approached Deutsche Telekom about purchasing more of its 't-' prefixed domain names including t-home.co.uk. Deutsche Telekom declined the offer, stating that those domain names were not of interest.
In early 2006, Deutsche Telekom secured a trade mark registration for T-HOME in relation to financial services.
Lammtara started using the domain name in January 2008 as a link to Lammtara's own financial website at moneybags.net. This resulted in Deutsche Telekom's solicitors Lovells sending Lammtara a warning letter asserting their client's trade mark rights and requesting the transfer of the domain name t-home.co.uk. Lammtara made a without prejudice offer to sell the domain name (and all its other 't-' prefixed domain names) for approximately €200,000 per domain name.
Thereafter Deutsche Telekom filed a domain name complaint under Nominet UK's Dispute Resolution Service seeking transfer of the disputed domain name.
The domain name dispute appeal
Deutsche Telekom lost the initial domain name dispute case and then appealed the expert's decision.
Lovells, the lawyers for Deutsche Telekom, claimed that the domain name t-home.co.uk was an abusive registration. They argued that Lammtara's use of the domain name for the provision of financial services infringed Deutsche Telekom's trade mark rights and also took unfair advantage of those trade mark rights. Lammtara was said to have engaged in a pattern of abusive registrations. Lovells also relied on Lammtara's demand for €200,000 as an abusive use of the domain name.
For its part, Lammtara claimed, amongst other things, that Deutsche Telekom had never exercised its trade mark rights in relation to financial services, that Lammtara never intended to cause confusion and there was no evidence that any had occurred and that the risk of confusion in this case was minimal.
Trademark rights
There was no dispute that Deutsche Telekom had trademark rights in respect of the name and mark "T-HOME".
Abusive registration
Lammtara registered the domain name before Deutsche Telekom acquired rights in the name T-HOME. The appeal panel, therefore, had to decide whether Lammtara's subsequent use of the domain name was abusive.
The appeal panel said that there was no evidence that Deutsche Telekom had started using T-HOME before January 2008 (when Lammtara started use of the domain name in dispute). In fact, Deutsche Telekom had refused to say when it started using the name. The panel concluded that, if Deutsche Telekom had started the name earlier, it was not significant enough that Lammtara must have known of it before receiving the Lovells warning letter.
The appeal panel pointed out that domain name disputes need to be determined by reference to the Nominet's domain name dispute policy and not by reference to trade mark infringement.
Deutsche Telekom became aware of the domain name in 2002 but told Lammtara that it was not of interest. The panel did not see why, in January 2008, Lammtara should have been aware of Deutsche Telekom's change of heart and that Deutsche Telekom had obtained trade mark registrations in relation to T-HOME for telecoms (its primary activity) but also financial services. So, as at January 2008, there was nothing abusive about Lammtara's behaviour.
Use of the website had commenced innocently and, as soon as Lammtara realised Deutsche Telekom was not going to purchase the domain name, it took down the site.
The appeal panel's view was that the offer to sell the domain name was made under threat of litigation in the hope that Deutsche Telekom would pay big money for it - as it had done previously for another "t-" domain name. The panel didn't think that the amount sought by Lammtara was connected with Lammtara's use of the domain name for financial services. Dealing in domain names was of itself entirely legitimate.
In the circumstances of the case, therefore, there was nothing abusive about Lammtara's offer.
The panel also decided there was no pattern of abusive registrations as there was no connection between the domain name in dispute and the other allegedly offensive domain names owned by Lammtara.
"Take home"
Just because somebody offers to sell as domain name for a six figure sum does not mean that the domain name is an abusive registration. It all depends on the context. Here, the context included the fact that the domain name predated Deutsche Telekom's trade mark rights, that Lammtara had used the domain name innocently and that the offer for sale was made under threat of litigation and with the backdrop of a previous substantial transaction between the parties for a similar domain name. Result: the disputed domain name was not an abusive registration.
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