The domain name has been owned by former multimedia consultant
Garth Sumpter since he registered it in October 1995.
According to the ruling, Sumpter initially used the name in
connection with his consultancy business, which traded as GAMEweb.
But in May 2002 he incorporated a new company, Garth Associates
Multimedia Entertainment (G.A.M.E.) and a few months later
re-launched the web site as an on-line computer games store.
Two years later, following failed negotiations, the Game Group
complained to Nominet, the registry for all domain names ending
.uk.
According to The Game Group plc, the name GAME has been used by
it and various predecessors in title since 1990, and in January
2002 it contacted Sumpter in order to discuss the possible purchase
of the name. A price of £18,000 was agreed with Sumpter, according
to The Game Group, but the transaction did not proceed.
The following month, the retailer says Sumpter offered to sell,
seeking over £30,000. Discussions followed, but again a sale did
not close. Sumpter denied ever initiating negotiations.
Almost a year later, The Game Group plc offered £100,000 for the
domain. This was rejected by Sumpter, who advised that the domain,
together with the company, were valued at £1 million, and that
another high street retailer was interested in purchasing them.
The Game Group plc argued that it had rights in respect of the
trade mark GAME, which is identical or similar to the disputed
domain, and that Sumpter's use of the domain is abusive because it
creates confusion in the mind of users.
It said the game.co.uk site was a competitor to its own web site
at game.net, and said there had been no attempt by Sumpter to
distinguish his business from that of GAME.
The retailer also argued that Sumpter had changed his use of the
domain in response to its initial approach in January 2002, hoping
to take advantage of its reputation or to sell the domain at an
inflated price.
Sumpter denied all the allegations, pointing out that the domain
had been registered in connection with a legitimate business web
site, and had been used since 1995, until recently without
objection from GAME. He had also traded under the name G.A.M.E.,
said Sumpter.
Sumpter argued that the domain was generic and descriptive and
of such wide application that The Game Group plc could not
reasonably expect to have exclusive use of the term. Furthermore,
the generic nature of the term explains any confusion with regard
to the domain, he said.
Sumpter also explained that the change of use of the web site
related to the loss of one of his major business contracts, such
that he needed another business opportunity, and preferably one
that he could do from home.
The ruling
Nominet's sole panellist, Andrew Lothian, found that the
retailer did have rights in the mark "GAME", despite the question
over the generic nature of the term. Any confusion over ownership
of the term, said Lothian, related to the fact that Sumpter had
changed the nature of his business into one that competed with the
complainant, and not the nature of the term itself.
"Clearly, on a simple analysis, the Complainant's business is
not 'GAME'; it is the business of selling computer hardware and
software, electronic games and related goods," said the panel. "In
this sense, the mark cannot be wholly descriptive. A term such as
'ELECTRONIC GAMES' would be far more descriptive of the
Complainant's business."
In addition, said Lothian, the use of the mark by the shop has
rendered the mark distinctive of the goods provided by GAME among
most of its customers. It is therefore not wholly descriptive of
the business, even though some of the items sold by GAME might be
described as games.
"This is a very difficult question," he explained, "and in the
context of a mark like GAME, being a word in common usage, the
Expert takes the view that a demonstration of very wide or
extensive use is necessary but that the Complainant has narrowly
met this requirement."
The panel also found that there had been an abusive
registration.
The evidence provided by GAME of confusion in the mind of the
public was compelling, and the notices shown on Sumpter's web site
distinguishing it from GAME were not sufficiently prominent or
ambiguous to avoid confusion, said the panel.
While Sumpter had legitimately used the domain prior to the web
site re-launch in September 2002, this did not excuse a deliberate
change "which the Respondent may be presumed to have known would
conflict with and cause confusion detrimental to the business of
the Complainant".
Accordingly, said Lothian, the domain name is not currently
being used in connection with a genuine offering of goods. The
registration was therefore abusive.
He added that he was "somewhat reluctant to transfer to the
Complainant a domain name to which even the Complainant has
ascribed values from £10,000 to £100,000 over recent years."
Nevertheless, as Sumpter had brought the situation on himself by
changing the use of the domain in the knowledge of GAME's rights in
it, the panel ordered that the domain be transferred.
Sumpter is appealing the ruling.
