January 2008
Maestro misses out on domain name maestro.co.uk
A recent decision of a domain name dispute resolution service found that payment card firm, Maestro International, cannot use the domain name, maestro.co.uk. Nominet, which administers the .uk registry, found that Mark Adams, a web based designer and domain name dealer, could keep the domain name maestro.co.uk which he had registered.
Adams claimed that he planned to use maestro.co.uk for music downloads, and education and tuition services. It was not disputed that Maestro International had rights in respect of the name or make MAESTRO which is identical or similar to the domain name. The question for the panel was whether or not registration of the domain name was an abusive registration. Under Nominet’s policy, a registration will be abusive where it is registered or used in a manner which takes unfair advantage of, or was unfairly detrimental to the rights of the complainant.
Maestro argued that Adams’ registration was abusive because he had registered the domain name with Maestro International in mind and that his registration of the domain name was part of a pattern of registering domain names featuring well-known trademarks of others. The other domain names that Adams owns include the trademarks BIG BROTHER, BEVERLY HILLS COP, FORREST GUMP and POP IDOL. The panel found that MAESTRO was not necessarily part of this pattern as it was known for its ordinary English meaning. The other marks were considered combinations of words that were either not common expressions or words whose fame as trade marks had overwhelmed their ordinary meaning. Where the domain name is a single ordinary English word, the evidence of abuse has to be persuasive for a registration to be “abusive” under Nominet’s policy.
Briffa’s comment
With the internet being such an important part of modern society, a domain name is a valuable asset for any business and it is inevitable that disputes will arise. This case highlights that domain name dealers need to be careful where they own domain names that contain famous words or names which third parties may have rights in.
Particularly where domain names include the trade marks of others, the courts will consider trade mark law and the tortious action of passing off in their reasoning. In the main case on domain names known as the One in A Million case, several companies including Sainsburys and Marks and Spencer sued the owners of several domain names including marksandspencer.com and sainsburys.com on the basis of registered and unregistered trade mark infringement. The Court of Appeal found that the owners of the domains were using those names as instruments of fraud as they did not point to websites and were used only in advertising for their sale. The owners were liable under the law of “passing off” and were required to assign the domain names to the claimants.