…to clothes retailer “Oasis ” who used third party owned oasis.co.uk to drive traffic to its own site then tried to shut it down. Amisha Patel reports.
Topic: Domain names
Who: Oasis Stores Limited v J Dale
Where: United Kingdom
When: 26 March 2009
The appeal panel of Nominet's dispute resolution service ("Panel") delivered a blow to Oasis Stores Limited ("Complainant") by blocking the clothes shop from gaining control of oasis.co.uk ("Domain Name"). The Panel overturned an earlier decision of a Nominet expert requiring the transfer of the Domain Name from its owner Mr J Dale ("Respondent") to the Complainant.
In an unprecedented move, not only did the Panel allow the Respondent to submit additional evidence at appeal (which is against the procedure for the conduct of proceedings under the dispute resolution service ("Procedure")) but it also condoned the flouting of the Procedure by simply reprimanding the Respondent with some harsh words.
Background and Facts:
The Complainant registered a complaint with Nominet on 6 October 2008 seeking a decision that the Domain Name in the hands of the respondent was an abusive registration. Users typing the Domain Name into an internet browser would be diverted to a website which essentially operated as a parking page and displayed: adverts for various stores (including Oasis Clothing UK), links to the related search terms Oasis UK, Oasis Clothing UK and Oasis Fashion Shops and a link to allow users the option to purchase of the Domain Name.
The Complainant sent the complaint to the Respondent on 7 October 2008 and prior to this, on 28 August 2008, the Respondent was sent a letter before action at his PO Box No address in Bristol. Neither letter nor complaint was delivered to the Respondent as the address at which the correspondence was being sent was not up to date and current.
On 8 December 2008, in the absence of a response to the complaint, a Nominet expert determined that: the Complainant had rights in the name "Oasis", the name was identical or similar to the Domain Name and the registration of the Domain Name with the Respondent was abusive – and therefore that the Domain Name should be transferred to the Complainant.
In January 2009, the Respondent filed an appeal notice seeking to appeal the decision of the Nominet expert and to introduce new evidence. The Panel had to consider Procedure in exercising its discretion having particular regard to the requirements that no new evidence could be introduced in an appeal notice unless the Panel believes it would be in the interests of justice to allow this.
The respondent submitted that he:
- Had not received a hardcopy of the complaint – the address on the shared registration system, WhoIs, was out of date and despite Nominet having records of the Respondent's current address, Nominet had not taken any steps to try sending the complaint to any other address for the Respondent;
- Was not aware of the Complainant, did not have the Complainant in mind when he purchased the Domain Name in 2006 and purchased the domain name because it was an attractive highly evocative generic word, which would be valuable to his domain name development business;
- Was not guilty of an abusive registration – he had not purchased the Domain Name in order to sell it to the Complainant;
- The innocent pay per click use changed because the Complainant purchased the domain names oasis.co.uk and oasis.com as keywords for its paid advertising;
- Had made demonstrable preparations to use the domain prior to being made aware of the complainant.
The Complainant made the following points in reply:
- The respondent failed to receive the complaint as a result of his own carelessness and should not be able to benefit from this carelessness by submitting material which he is time barred from doing;
- The Complainant had a presence on the majority of high streets across the countries and therefore the Respondent's submission that he was unaware of the Complainant at the time he purchased the Domain Name could not be accurate;
- No explanation had been provided by the Respondent as to why there were links to other members of the Complainant's corporate group and therefore the allegation that the Complaint controlled the content of the Domain Name because of the keywords could not stand true;
- The Respondent had not submitted any evidence to support the claim that he had made preparations to use the Domain Name and in any event there had been a period of 3 years from the date of purchase in which there had been no development activity.
Admission of new evidence
Though the Panel agreed with the Complainant that it is the Respondent's responsibility to keep contact details up to date for all his registered domain names and to properly attend to communications from Nominet, it gave substantial weight to the fact that assessment of the evidence pointed to the dispute not being a case of abusive registration such that a decision in favour of the Complainant would deprive the Respondent of a valuable asset.
The Panel therefore found, in the interests of justice, in favour of the Respondent, making note that it would be disproportionate and an unjust penalty to deprive the Respondent of the Domain name on the basis of the Respondent's carelessness with regard to administrative matters and that the Respondent would be penalised sufficiently for its non compliance by having to pay the costs of the appeal.
The Panel determined that in the absence of any evidence that the respondent was purchasing the Domain name as part of a deliberate scam to take advantage of the Complainant's name and business, simply knowing of the complainant's business would not itself make the purchase of the Domain Name, which comprises an ordinary English word, objectionable.
The Panel examined the Complainant's website (www.oasis-stores.com) and discovered that the underlying source code contained metatags to the terms "oasis.com and oasis.co.uk and oasis.net). Critically, it was established that the Complainant had paid Yahoo for the use of "keywords" comprising the text strings "oasis.co.uk and oasis.com" and the effect of using these keywords for its advertising essentially meant that it was impossible for the parked page not to show adverts of which the Complaint subsequently complained about.
The Panel concluded that the Complainant, by choosing keywords (and possibly metatags on its own website) to domain names which it does not own, to some degree caused the parking page to behave in the manner which the Complainant alleged was abusive. And so, as the behaviour of the parking page was caused by the actions of the Complainant itself, the complainant should not be able to rely on the behaviour of the parking page as evidence of abusive behaviour by the Respondent.
Why this matters:
Whilst the reinforcement of the right to purchase and keep a domain name associated with famous brands (so long as there is not abuse in its use) is a welcome reminder of the protection available to domain name owners, the relaxation of the Nominet Procedures in this matter undoubtedly introduces an element of uncertainty for the determination of future disputes. The question left open is just how far might the Procedures be stretched to protect the smaller players in the market?