Out-Law / Your Daily Need-To-Know

Apple Computer has won the transfer of the domain name itunes.co.uk from a small UK company, which registered it before Apple launched its iTunes service. CyberBritain Group is considering an appeal, according to reports.

The group, run by former teenage dot.com star Benjamin Cohen, registered the domain on 7th November 2000, and has since used it to redirect users to a succession of web sites owned by the group – including, for four days last November, napster.co.uk.

According to the Nominet ruling, that redirection followed discussions between the CyberBritain and Napster about an affiliate programme, and included an enquiry by Cohen as to whether the music download company would be interested in acquiring the domain. Napster said no.

Apple applied to register iTunes as a UK trade mark on 24th October 2000, an application that was published on 6th December 2000. It launched the iTunes music service in the US on 28th April 2003, and in the UK on 15th June 2004.

Sole panellist Claire Milne found that Apple had clearly demonstrated rights in the name iTunes, and that CyberBritain had not used the domain for anything other than redirection or sale purposes. Nor, she added, had the UK firm used the name "itunes" as a name "in any way not associated with 'itunes.co.uk'".

On the question of whether CyberBritain's ownership of the domain was an "abusive registration", the panellist decided that, on a balance of probabilities, it was.

CyberBritain had not, on the evidence provided, registered the domain primarily for the purposes of making money from the subsequent sale or transfer of the domain, nor had an offer to sell the domain to Apple for the price of £50,000 taken advantage of the computer giant, the offer having been made at the request of Apple in the first place.

But the panellist said that CyberBritain had also offered to sell the domain to Napster, one of Apple's competitors, and this did take advantage of Apple's rights in the "itunes" name. She explained:

"I consider that this took unfair advantage of the rights of the Complainant: any value in the domain name for the competitor would derive more from its association with the well known name of the Complainant than from the little known name of the Respondent. I consider that the offer to sell the domain name to the competitor was also unfairly detrimental to the rights of the Complainant, because if successful it would have equipped a competitor with the name."

CyberBritain's actions and statements led the panellist to believe that if the name was allowed to remain with the group then "people could well be confused and business could well be lost by the Complainant in a manner that took unfair advantage of, or was unfairly detrimental to, the rights of the Complainant".

She therefore ordered that the domain name be transferred to Apple.

According to reports, Cohen is considering whether to appeal the ruling, either through Nominet or to the High Court.

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