Game.co.uk DRS Case

[AcornDomains-News]

http://www.nic.uk/DisputeResolution/Decisions/Drs02166Game.html

Interesting DRS case, shows that even with a totally generic domain like game.co.uk, it can be taken from you.

 

[domaingenius]

Interesting and scary. It just reminds me of the power of money
and the money that comes from power !

DG

 

[AcornDomains-News]

the guy lost his business and £100,000!

 

[Paullas]

.

it is pending so i recon it will goto court and he will win (hopefully), just bad for uk catchers if he looses as i recon it will open the flood gates..

 

[AcornDomains-News]

Well the clincher seems to be the expert sees that people are confused when ordering from the current site thinking they are ordering from GAME.

I wonder if he had put a clear notification on his homepage if he could have avoided giving the complainant ammunition for the case and may have held onto it.

The DRS system hinges on whether or not a registration is "abusive".
IMO the expert seems to think it is abusive due this point, that people think they are ordering from the complainant.

 

[domaingenius]

One piece of case law to remember is from One in a Million
which states that "there is no tort of going equipped to pass off".
In other words possessing a domain with someones trade mark
is not in itself a tort, it is what you do with it that can make it
unlawful. I was contacted recentlt by a large US Corporation
seeking to sue me. I did a trademark search and then asked them
which specific trademark they relied on .Despite several requests
they have gone quiet for weeks, probably coz I outflanked them
as they have no TM relevant to this situation, although they have
tens of TM's.

DG

 

[danny]

Re Expert decision

In my opinion or how I understand it, is that the registration can only be classed as an "abusive registration" if the name was registered in bad faith when the registrant originally purchased/registered the domain.

As this was back in 1995 it clearly was not an abusive registration as he had no intention or insight as to what or who might use this purely generic name to perform business under. I think that it is lazy practice on the complainant’s behalf to use such a generic name to trade under without due care and that they therefore can surely only expect to have limited rights over such use.

As our business revolves entirely around generic domain registrations for purpose of development at some point in time I think that it would be benificial for us to all have our say in this unfair decision. Anyone want to call Nominet to step forward.

The respondent is surely at some fault for lack of information on their site to clearly state that they are not indeed the company in question, but in my honest opinion I think that there is injustice the experts final decision. Who thinks that the name should just be handed over to the giant for free and not returned to its rightful place “THE DROP”? [violins play]

Guess we’ll just have to see how the court proceeding pan out, but I sincerely hope that the outcome is of much fairer nature.

Happy Hunting

 

[domaingenius]

The only "Game" trademark actually registered is NOT
The Game Group Plc but is for a South African drinks group
in UK.http://webdb4.patent.gov.uk/tm/text...ted=99&crosssearch=Y&statusselected=A

 

[danny]

Re TM

Yes well spotted DG, they do not own a TM over the name and probably never will due to its GENERIC nature and hopefully never will or they will hold a huge monopoly over the market and there would be no room for any other businesses.

However you may also note that they have (3) applications, (1) x New and (2) x Examined. Who knows, they might get the name registered yet...........But I reiterate they have NOT got the TM at the moment "Nominet". Exclusivity to this company alone should not be allowed.

Regards

 

[domaingenius]

Exactly ,and IF,and I say IF because I dont think that they should do anything, Nominet were to do anything they should have released the name
not transferred it, though even that would be grossly unfair. What must alos be remembered though is that one does not have to have a Trademark per
se to have rights in a name !!.That is a key point here. If a party can
prove that they have used a name consistently for a particular trade then
they can still have a Service mark for that name for that trade,but
that still allows others to use the same name for other trades.

If you look at the facts it becomes clearer that the decision is unfair;
1. The only trademark is for a drinks company (which by implication
means that the Patent office accepts that Game can also mean other
things besides what Game can also mean)
2. The Game Group Plc is called that, and not just "game".
3. The Game Group is applying for a trademark that is identifed
NOT by the word "game" alone but by style and colour of
lettering
4. I dont think that the owner of Game was passing off as "The Game
Group Plc" ,unless he was using same style and colour of lettering ?.

Thats my thoughts. I do hope that he takes this to Court, although dont
alway expect a logical conclusion from them either, its taken me
7 years on 1 case (not about domains) !!

DG

 

[keys]

This is a landmark case, whatever the final outcome. It is hard understand a successful DRS case over an apparently generic name.

The Complainant has rights to the name, so the first condition is satisfied. I cannot see any possible challenge on this point.

Has the Respondent's use of the name been abusive? We only have a summary of the text from the Expert, in support of his decision.

With the benefit of hindsight we can see that it was not very smart of the respondent to default on an agreed a sale of the domain, then go on to make use of it in a way that might compete with Game Group plc.

Loss of the domain is a severe punishment. If the decision is upheld, then other generic domains must be exposed to a significant risk from DRS.

 

[AcornDomains-News]

Well stated Keys.

Does this mean they can pursue any domain with the word GAME in it?
It is their equivalent to Disney or Sony etc so why not?

 

[domaingenius]

Leaving aside the Nominet dispute system, in a Court the only way that
the name could be claimed would be if the owner of Game.co.uk was
using it to pass off as another company. If for example he was selling drinks on the web site the owner of Game trademark for drinks could claim
it infringed his trademark. I regard to The Game Group Plc,
it would depend on what type of lettering that the owner of .co.uk was
using on the site ,and what exactly was being sold. The basis on which
the Game Group Plc is seeking a trademark is NOT on the basis of
the name alone it is on the colour of the letters making up the word
Game.

The Court should rule that the claim is not valid but depends on what was
on the site at the time.

DG

 

[keys]

DRS decisions are based on rules set by Nominet, and they are different from those in a court of law. A person may have the law on his side, and still lose a DRS action.

A major consideration in legal proceedings is the cost and time. Nominet recently won a court case, and were awarded £81,000 in costs. If DRS is to apply the same process and rules as a court then the costs will escalate, and many disputes would end up in court.

We need DRS, and I think most decisions are appropriate, even if I do not like them. Occasionally a decision will be controversial, and if the losing side is willing and able to pay £3500, they can appeal.

I received a DRS complaint over a popular surname. In further communication the complainant agreed that he had no hope of getting the name, and he also had no intention of paying for a decision. His only purpose was to be nuisance and make a protest against domain sellers. I support the idea of a modest payment at the outset of DRS, to deter such behaviour.

 

[danny]

Non-binding decision

Hi again,

It seems to me that the respondant's website has not actually infringed upon the complainants rights. Their site is very inocent and looking at the content and design neither does it lead the visitor to beleive that they are connected to the complainant in any way.

In case you wanted to see what the site looked like in Dec 2003 DG click here > http://web.archive.org/web/20031230025659/http://www.game.co.uk/

As Nominet point out each DRS is considered on its own merits and the decisions made are not binding. So the outcome of this case should not necessarily affect future cases.

I don't think we have to much to worry about other than the fact that Nominet seems to not follow their own guidelines. Here's a snap shot that some managed to sneek at one of their recent meetings > http://www.members.aol.com/bnjmcalister/spencer/_borders/monkeys.jpg

Danny

 

[domaingenius]

Interesting thanks. I think it will be a sad mistake to let the decision
stand. I also think that the owner would have been wise to make it even
clearer that he was not connected with The Game Group Plc but even without
that notice I would'nt think it was connected.
The name must be worth a good amount and clearly Game Group Plc thought
it was much ,much cheaper to take a chance on DRS and struck lucky.

DG

 

[domaingenius]

Here is an update on game.co.uk

http://www.theregister.co.uk/2005/02/16/nominet_game_domain_dispute/

 

[charlie]

However it does contain some unusual assumptions and several apparently contradictory statements.

NOMINET all over from what I’ve heard! :?

as i read more i get more bewildered - if i had money I’d back the guy and take them to the European court - how come the journalist can rip their argument to pieces and the so called experts miss all the points raised?

I'd like to see their recent bank deposits!

its not like mr Sumpter had it parked on sedo - he had a fully flying business making £60k a year - an normally company would be valued at at least 5 times this so his million quid request was not so far fetched - and what does a million get you these days - i doubt he could retire comfortably. now he aint got anything!

Unless Nominet wishes to see it exemplary record wiped out by an invitation to big businesses to squash smaller competitors by reinterpreting long-established rules, it needs to overturn this decision, no matter what it believes about Mr Sumpter's behaviour

domain owners should be worried - I’m sure solicitors all over the country smiled at this ruling and are contacting their clients now!

 

[Admin]

not abusive to sell generic domain names

http://www.nominet.org.uk/content/files/Listsw.doc

contains an interesting statement "It is not abusive to sell generic domain names."

It seems the game.co.uk case differs in the way the name was used relative to the complainant.

 

[storebuilder]

This can't be right at all can it?

It's one thing to deliberately register a domain name knowing full well that you are infringing trademark but this is quite clearly a case of "reverse domain name hijacking".

http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0242.html

An Internet business making a net annual profit of 60K would clearly be valued at somewhere around 250k and that's before you take values of domain names, search rankings etc into account.

1 Million is high but if you think it's ridiculous then just look at some of the share prices of some Internet companies that I have worked for. Oneview.net reached £5 a share back in 2000 giving the company an insane valuation and it never made a profit. This argument that game ltd is being "strong armed" just does not hold water.

The argument should not centre over ownership of the domain name - that is clear that it belongs to Mr Sumpter. It is a generic domain name and no one holds trademark rights to it.

The issue is the USE that the domain name is being put to.

To transfer ownership of the domain name because someone doesn't like what it is being used for is outrageous. Ownership of the domain name is one issue. It's usage is quite clearly a legal argument that comes under the boundaries of "passing off" and other related legal niceties.

This decision is akin to not only stopping someone from trading, but also taking away the building that they trade from. In this case the building quite clearly has a high value - football agent anyone?

I'm against cybersquatters and those who register celebrity names etc but I'm totally against this ruling because it's crossing the line of domain ownership and entering into an argument over what the domain is used for which Nominet have no right to make a decision on - that is for courts and judges to decide.

This decision needs to be reversed. Fair enough Game Ltd may (or may not) argue about the usage of the domain - but they certainly can't claim ownership to it. These are two separate and distinctive issues.

Outraged of Telford.