DRS 04373 jack-daniels.co.uk

[Whois-Search]

I agree with the outcome of this case since the complainant did have a trademark and Respondent did not submit a reply:

http://www.nic.uk/digitalAssets/17202_jack-daniels.pdf

However what is interesting is....

The experts uses the "offer to sell the name" against the respondent:

I am persuaded that possible sale of the domain name to the Complainant or its competitors was in the mind of the Respondent at the time when he registered the domain name.

Then the experts suggests the "sponsored links" are abusive:

Was the Domain Name in this case registered “primarily” for this purpose? I do not know, but there in one factor that would suggest that it may not have been. For example, the website operating from the Domain Name includes a large number of “sponsored links”. This suggests that the Respondent registered the Domain Name in order to set up such a website in the hope that internet users looking for the Complainant would inadvertently find their way to the Respondent’s website and in turn use these links thereby earning “click through” revenue for the Respondent.

Then he uses the Tony Willoughby four stage test from the decision in Chivas Brothers Limited -v- David William Plenderleith (DRS 00292):

All four limbs of the Chivas Case test are satisfied in this case and consequently, even without the additional evidence that I have described in this decision, it is reasonable to infer that the purpose of the registration was abusive.

All three of these issues above appear on the current DRS review:

http://www.nominet.org.uk/policy/consultations/updatedrs/webversion/

- a general offer to resell a domain name

- sale of traffic

- Incorporate tests set out in previous decisions that experts routinely rely or are likely to rely on (because they were in appeal decisions) so the information is in one place.

So if the DRS policy is changed to allow the first two, but the third is also accepted what happens in cases like this then?

However DRS 00292 the "Chivas case test" is NOT a appeal decision: http://www.nic.uk/digitalAssets/1027_chivasbrothers.pdf

 

[tifosi]

Agreed. You can't simply infer a reason for registration in absentia. It shouldn't be a part of the reasoning of the experts decision.

The expert doesn't assume that sponsored links are abusive, just that they are in his expert opinion part of (a major part of) the reason for registration.

That it's abusive. I'd have to agree. Proactively registering a trademarked domain with the intention of profiting from the goodwill of the business.

S

 

[grandin]

Agree

I totally agree 'That it's abusive. I'd have to agree. Proactively registering a trademarked domain with the intention of profiting from the goodwill of the business.'

However, this works both ways and the law needs recognise small businesses rights relating to the domain names:-

Due to no fault of the registrant rights at the time of registration are undefined but a right clearly exists and sold as so by Nominet and observed by the DTI who oversee the Patent Office who issue Trade Marks.

As stated above I agree that the use of a PPC page can be restricted by a prior right but if things are to remain fair then a later right (no matter how big) cannot then effect the registrants prior right.....this needs to be addressed as I am sure this scenario will happen in time.

To clarify the scenario....

Registrant registers dingalingdong.co.uk and sets up a PPC page offering door bells (among other shop products). Along comes a new venture selling door bells via a well known DIY store...the brand is called Ding A Ling Dong. Ding A Ling Dong becomes a big success and is a household name thus the registrants PPC page gets increased traffic cause the well known brand decided to set up shop on his street!

Lee

 

[tifosi]

but if dingalingalong was a well known tradename (either as a trademark in it's own respect, or a well known brand name) and mr (or mrs, now we have so many tags ) registrant comes along and registers ding-a-ling-along.co.uk and parks it with adverts for dingalingalnog, then IMO that's a different issue.

The issue of proactivity is I feel more important than a clash of names. It's intent. It doesn't have to be an intent to sell to the tradee to be abusive.

But... and this is similar to the case of ghd.co.uk. If the domain was registered before the development of household brand, and the registrant doesn't change the usage of the domain to profit from the new improved potential use of the domain then how can it be abusive? It can only be a blocking registration if its registered after the fact and with intent to stop the tradee using/registering it. IMO the experts have got this wrong on a number of occasions.

S

 

[grandin]

Experts

The experts get alot wrong but seem to still profit from such mistakes...ie. get paid.

As with GHD.co.uk that is clearly a different issue and I would not like to comment any further as at today in this respect.

Lee