Out-Law News | 13 Oct 2010 | 4:58 pm | 5 min. read
An appointed expert for Nominet, which is responsible for .uk domain names, has ruled that ihateryanair.co.uk must be handed over to the airline because it took unfair advantage of the company's trade mark-protected name.
The site has moved to a new address, ihateryanair.org.
The Nominet expert said that the name handover was not down to the caustic criticism hosted at the site and that the .uk domain must be capable of hosting sites criticising companies and that such sites "are essential in a democratic society".
But by accepting money from advertisers in some of the same businesses as Ryanair and its affiliates while operating under a domain name containing Ryanair's trade marked name, site owner Robert Tyler broke Nominet policy on registrations, the expert said.
"This case quite literally turned on [Tyler's] receipt of £322 and whether or not it was unfair," said expert Jane Seager wrote in the Nominet ruling. "It would appear from the surrounding facts and evidence supplied that when the traffic to his website increased [Tyler] simply realised that he could not only criticise [Ryanair] but also make some money off the back of such activity."
"However in the Expert's opinion, given the fact that the use of [Ryanair's] trade mark in the Domain Name was undoubtedly responsible for the level of traffic to the website ... any subsequent advantage for [Tyler] (or indeed detriment to [Ryanair]) as a result of the commercial links took [Tyler] outside the terms of what is permitted under the Policy. [Tyler] must now forfeit his Domain Name as a result," said Seager.
Domain name registrations which take unfair advantage of a person or company's rights, such as a trade marked term, are not allowed under the Nominet policy.
Ryanair argued that the content of the site as well as the commercial links it contained made it abusive.
"The editorial content of the website contains 'vitriolic and highly disparaging' comments about [Ryanair]," said the ruling's summary of the company's arguments. "In [Ryanair's] opinion the material published on the website goes significantly beyond fair comment and is unlawful and damaging to [it]. [Ryanair] argues that it is an abuse of [its] Rights in its trade mark to use 'Ryanair' as part of the Domain Name to attract visitors to the website to promulgate such material."
Tyler argued that Ryanair did not possess much goodwill to be exhausted by sites like his. Though it had some, it "has also built up a substantial and growing amount of dissatisfaction with the services it provides", said his submission.
"[Tyler] submits that [Ryanair] is using Nominet's Dispute Resolution Service in order to try and censor critical content about the services it offers," said the ruling, outlining Tyler's view. "[Tyler] should be free to use the trade mark within the Domain Name and within content on the website as long as such use does not involve an act of registered trade mark infringement and/or an act of passing off."
Tyler earned £322 from affiliate links to services including travel insurance that appeared on the site. He said that this should not be the cause of his loss of the domain name.
"The existence of affiliate links for a short period of time on the website did not change the purpose of the website," said the ruling's summary of his view. "[Tyler] states that, in order to prove that the affiliate links were an irrelevant aspect of the website, they were withdrawn from the website on 11 May 2010. [He] points out that he has no intention of re-instating such affiliate links and states that he has offered [Ryanair] a binding undertaking in this respect."
The Nominet Expert said that if the case were being heard under the uniform dispute resolution policy (UDRP) operated in relation to .com sites, Tyler would probably have won because that policy says that domain names should be 'confusingly similar' to trade marks or other protected terms. The Nominet policy, though, says they should just be 'similar'. She said that there could be little confusion that 'ihateryanair.co.uk' was a site operated by Ryanair.
"A panel deciding this case under the UDRP may well have found for the Respondent on the basis that the Domain Name is not 'confusingly similar'," said the ruling. "But the Policy deliberately sets a different test and there is no requirement for confusion."
She said that the fact that the website criticised Ryanair is not a reason to take the domain name from its operator.
"The Expert accepts that the critical website content could well disrupt the Complainant’s business by encouraging those accessing the website to use a different airline. However, mere disruption is not all that is required under the Policy – such disruption has to be unfair. In the Expert’s opinion in a free and open society internet users should generally be able to post comments on their recent experiences or on current events, as long as such postings do not fall foul of the law," she said. "Any resulting disruption as a result of criticism appearing on a website (or in any other media for that matter) is merely something that businesses have to deal with on a daily basis. It cannot be said to be unfair."
The site contained links to other airlines under a 'sites we like' heading. This did not break Nominet's rules because Tyler made no money from hosting those links, said Seager. "Third party airlines may benefit from the links, but no evidence has been put before the Expert to suggest that the Respondent himself does. Any resulting disruption to the Complainant’s business thus cannot be said to be unfair," she said.
When Tyler earned money from affiliate links, though, the situation was quite different, ruled Seager.
"Whilst the links to other airlines may be seen as genuine recommendations as part of an ongoing discussion about air travel, commercial links cannot. In the Expert's opinion commercial links have no place on a criticism website, and any detriment [Ryanair] may suffer as a result of use of the Domain Name to attract internet users to click on such links is unfair," she said.
"In the Expert's mind there is undoubtedly a link between the [Tyler's] financial advantage and [his] use of [Ryanair's] trade mark in the Domain Name," she said. "[Tyler] only earned money because of the traffic to the website, and such traffic must have been influenced by the Domain Name."
"It cannot be fair to take advantage of the reputation attached to another party’s trade mark in this manner, whether it be good or bad, and in the Expert’s opinion [Tyler] has therefore effectively taken unfair advantage of [Ryanair's] Rights in order to gain a financial advantage," said Seager.
The domain name should be handed to Ryanair, Seager ruled.
A message on the ihateryanair.org website said that it had lost on a "small technicality".
"Never fear, we have already moved the site to it’s new home on www.ihateryanair.org and will continue to provide you with all the latest on how this pathetic excuse for an airline will attempt to extract cash from you through sneaky hidden charges, fly you to places that are not where you actually want to go and leave you stranded when the cr*p hits the fan," it said.