Though it pre-dated the (now) News International-owned Myspace by six years, Total Web Solutions’ “myspace.co.uk” domain name was recently bagged by the social networking behemoth. But how come if TWS got there first? Emily Devlin networks.
Topic: Domain Names
Who: MySpace, Inc. v Total Web Solutions Limited
When: January 2008
Where: Nominet UK Dispute Resolution Service
Law stated as at: 29 February 2008
MySpace has succeeded in having the domain name myspace.co.uk transferred to it under Nominet's dispute resolution procedure ("DRP"). The decision of the Nominet Expert was based on the fact that the domain name in question had been used in a manner that took unfair advantage of or was unfairly detrimental to MySpace's rights to the MYSPACE name, notwithstanding that the domain had been registered in 1997, well before MySpace was founded and had secured trade mark rights to the name.
Total Web Solutions ("TWS"), a company in the business of managing and registering domain names, originally started using the domain name in 1998 to run a website offering customers their own microsites and email addresses. It still provides 18 customers with email addresses in the form [name]@myspace.co.uk.
MySpace was founded in 2003 and quickly became a household name, such that by January 2004 it had 22 million registered users. MySpace UK was launched in May 2006, and MySpace obtained a US trade mark registration for MYSPACE in December 2006.
In or around July 2004 TWS placed a holding page at the domain name, which provided "pay per click" links to various social networking sites, including myspace.com. TWS also offered to sell the domain name to MySpace for sums ranging from $100,000 and $430,000. Indeed, after MySpace wrote a cease and desist letter to TWS in May 2007, TWS reiterated that it was prepared to sell the domain to MySpace for £220,000.
In order to effect a transfer of the domain name in dispute, the Complainant in DRP proceedings needs to satisfy the Expert that, on a balance of probabilities, it has rights in the domain name and that the domain name, in the hands of the Respondent, amounts to an abusive registration.
MySpace was able to establish the necessary rights in the MYSPACE name without too much difficulty (despite TWS advancing arguments that the name is descriptive). As those rights post-dated the registration of the domain name, it then had to persuade the Expert that the domain name had been used in a manner that took unfair advantage of, or was unfairly detrimental to, its rights.
In reaching his decision the Expert noted that, amongst other things:
- TWS's attempt to sell the domain name to MySpace for a substantial sum did not mean the domain was an abusive registration;
- the domain name was not registered or used (at least until 2004) in a manner that took unfair advantage of MySpace's rights;
- it was, however, irrelevant that TWS would suffer as a result of the domain name being transferred; if MySpace were able to make out good grounds for the domain name to be transferred then that is what should happen and it is not for the Expert to undertake a balancing act of the sort suggested by TWS; and
- the DRP was not analogous with the law of passing off and the parties' submissions in this regard were not helpful.
Whilst the Expert found it difficult to conclude that TWS's use of the domain name would result in confusion, he did conclude that:
"it is entirely clear that [TWS] has either caused or permitted the web pages at the domain name to… take advantage of the association which visitors to the site would make between [MySpace's] now very well known trading brand MYSPACE and the domain name and of the goodwill which [MySpace] has accumulated in the field of social networking."
As such, the pay-per-click "parking" site accessible via the domain name enabled TWS to profit from the success of the MySpace site and therefore the domain name amounted to an abusive registration. Accordingly, the Expert decided that it should be transferred to MySpace.
TWS has since lodged an appeal.
Why this matters:
Jonathan Robinson, COO of Nominet UK, has commented that the decision: "serves as a warning that domain registrations are not guaranteed and need to be secured by pro-active management as well as a clear understanding of the dynamic nature of the industry". Certainly, this decision is a reminder that even if a domain name is registered and initially used in all innocence in relation to the genuine provision of services, the Respondent's subsequent use of it may render the registration abusive.
Whilst Expert decisions under the DRP are not binding on subsequent Experts (and the decision has been appealed), this decision will be encouraging to brand owners as it demonstrates they may still be able to recover domains, even though their rights post-date registration.