The ability of rights owners to challenge third party registrations
of domain names that include their trade names or marks has come
under the spotlight as a result of a controversial decision by the
Nominet appeal panel (the Panel). The Panel found against clothes
retailer Oasis, which failed to demonstrate that use by a third
party of oasis.co.uk as a parking page took unfair advantage of the
OASIS brand. Any challenge to such third party domain names is only
likely to succeed if the rights owner can show that the third party
is actively exploiting the name to take unfair advantage of their
brand and that the action giving rise to the complaint has not
occurred as a result of the rights owner's own behaviour. The
decision highlights the difficulties in protecting trade marks
comprising of commonplace terms and reinforces the importance of
securing relevant brand domain names at the outset.
The difficulties of demonstrating abuse
This decision raises both procedural issues relating to new
evidence on appeals and substantive issues on the ability of rights
owners to challenge third party use of their trade names and marks.
The domain name oasis.co.uk was registered by an individual called
Mr Dale in the 1990s and used as a parking or portal page (with
links to other sites, including sites for women's clothing). Oasis
challenged the registration and while the Expert in this case
originally determined that the name should be transferred to Oasis,
the Panel reversed this decision.
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Is registration abusive?
To be successful in gaining control of a domain name registered by
a third party, a claimant must prove to Nominet that the
registration is abusive. This requires the claimant to submit
evidence proving that the registration takes unfair advantage of or
is unfairly detrimental to the claimant's rights, either when
originally registered or as a result of subsequent use.
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Oasis was unsuccessful in arguing that the registration was
abusive at the time of registration (as it could not demonstrate
that Mr Dale was at that stage aware of the clothing retailer).
Oasis therefore submitted that the use by Mr Dale of www
.oasis.co.uk (the Website) was abusive in the sense that it took
unfair advantage of the OASIS name. Oasis substantiated its
position by highlighting that the Website was a "parking" or portal
page displaying sponsored links which would generate revenue for
the site owner. The links were created using automated software and
keyword advertising with Yahoo. Oasis had purchased keyword
advertising, including oasis.co.uk (which they did not own), and as
a result the Oasis official website appeared on the sponsored
links. As this link was the cause of the complaint by Oasis but had
been the result of Oasis' actions (which they did not refute in the
appeal), the Panel decided that the use of the domain name was not
an abusive registration by Mr Dale and, as such, should be retained
by Mr Dale.
Procedural issues arising in the appeal
The appeal decision also deals with certain procedural issues on
appeal. Mr Dale claimed that he had not received or dealt with the
original complaint as his details on the Nominet site were not up
to date. While the Panel reiterated that it is the responsibility
of the registrant to update the register, they allowed Mr Dale to
produce new evidence to deal with the complaint in the "interests
of justice".
Lessons to be learned from Oasis decision
The decision confirms the difficulty for rights owners in
recovering domain names from third parties and confirms the
importance of securing relevant domain names prior to launch of a
brand or as soon as such domains become available. This is
particularly true of descriptive or commonplace terms, which are
harder to monopolise in an online environment.
While it is not clear that the decision would have tipped in favour
of Oasis had it not registered keyword advertising for oasis.co.uk,
this clearly did not assist the retailer's case. As such, it is
important that any purchase of keyword advertising should reflect
the names that the business actually owns or to which it has rights
under licence.
Please click on the links below for the other articles in
the July 2009 IP/IT newsletter
Contacts
Mark Lubbock
T: +44 (0)20 7638 1111
E: mark.lubbock@ashurst.com
Ian Starr
T: +44 (0)20 7638 1111
E: ian.starr@ashurst.com
This newsletter is not intended to be a comprehensive review of
all developments in the law and practice, or to cover all aspects
of those referred to. Readers should take legal advice before
applying the information contained in this publication to specific
issues or transactions.