Nominet Domain Expert Focuses On 'Use Element' In Transferring Domain myspace.co.uk

MySpace wins UK domain name that pre-dated its service | The Register

Social networking company MySpace has won the right to have the domain name myspace.co.uk transferred to it despite the fact that it was registered six years before MySpace was founded. The fact that the myspace.co.uk address led to a 'parked' page with adverts for social networking sites including MySpace was taken to be evidence of an abusive registration and the domain name was given to MySpace.

Normally, registration of a domain before trademark rights attach is a surefire defense to cybersquatting.  Though Respondent recognized that the nature of its advertising
changed, it said it did not control that, and that it should not be
punished for the popularity of MySpace. 
This has become a common defense to cybersquatting.  Adlinks on suspect pages are generated by software which optimizes advertisements towards the links with the most clicks. Over time, the software forces the link offering toward common, and sometimes, trademarked, domains. Domainers have successfully argued in certain instances that the bad faith element is defeated since the domain registrant did not 'intend' to leverage a third-party trademark (i.e. "The software did it!").

Under the UDRP, bad faith has to be shown at the time of registration and also use.  The language is different under the Nominet domain dispute rules, allowing for transfer when registration was in good faith, but use changes to one that mimics the offerings of the trademark holder or its competitors.  This decision is sure to  create some rumblings in the domainer community.


You can read the full decision here.

Technorati Tags: nominet, myspace, my space, cybersquatting

Powered by ScribeFire.

Comments

[Domainers beware]

This decision jeopardizes one of the most powerful defenses a respondent has in a UDRP: the respondent's rights to the domain name predated the trademark holder's rights. This defense usually negates any possibility of bad faith registration.

This decision makes clear that bad faith use coupled with no legitimate website can cause a respondent to lose a UDRP. As such, the wilful blindness of the respondent (i.e. I didn't know what the software was doing) may become a distant memory. Ultimately, domainers beware, it may be time for you to consult with a cybersquatting attorney in order to avoid losing your valuable domains, or even worse, being labeled a cybersquatter.