The dispute resolution service for .uk registry Nominet refused
to overturn a previous ruling which let Mark Adams keep the domain.
Adams is a Milton Keynes-based web designer and domain name
dealer.
Maestro argued that Adams was responsible for a series of domain
name registrations that were close to other people's brands, and
that his registration of maestro.co.uk was abusive.
The appeal panel ruled that it did not prove the case that the
registration was abusive, and that because maestro is a normal word
with a dictionary definition it could not monopolise its use in
domain names just because it also happened to be one of its
brands.
Maestro argued that "in light of the evidence submitted of
registrations by the Respondent of domain names including well
known trade marks of third parties, the [original case's] Expert
was wrong … and he should have considered the complaint in the
overall context of a Respondent who has a record of registering
domain names which include third party trade marks," it said in its
submission.
"All of the domain names listed in the complaint are either
identical to or incorporate famous third party trade marks in which
the Respondent has no legitimate rights and therefore constitute a
pattern of registrations," argued Maestro.
Maestro said that the Expert in the original hearing had
misconstrued the rules governing his decision. "The Expert clearly
had in mind that it was necessary or at least of relevance that
there was no evidence of 'findings' of abusive registrations. This
in not the correct test to be applied under the Policy, and lead to
the Expert incorrectly dismissing this ground of complaint. The
correct test is whether 'The Complainant can demonstrate that the
Respondent is engaged in a pattern of registrations where the
Respondent is the registrant of domain names (under .uk or
otherwise) which correspond to well known names or trade marks in
which the Respondent has no apparent rights, and the Domain Name is
part of that pattern.' Had the Expert applied the correct test he
would have found that the registration of the Domain Name was
abusive," said the Maestro case.
Adams argued that his other registrations did not prove any
intent in relation to the maestro domain name, and that all he had
done was register a generic word. He told the panel that he plans
to use maestro.co.uk "for music downloads, educational and tuition
services."
The panel said it had just one question to answer: "in the
particular circumstances of this case, all depends upon whether the
Complainant can satisfy the Panel on the balance of probabilities
that the Respondent registered the Domain Name and/or has used the
Domain Name with the Complainant in mind."
The panel said that it doubted Adams's claims that he had never
heard of the Maestro brand and that he planned to launch a music
business. But it also said that it could not identify a pattern in
his registrations.
"The names and trade marks are 7 in number, namely: GOLDEN
ARCHES, BIG BROTHER, BEVERLY HILLS COP, FORREST GUMP, NET NAMES,
PHONE NAMES and POP IDOL," it wrote in its ruling. "The 12 domain
names identified certainly represent a pattern; but is the Domain
Name part of that pattern? On the evidence before it, the Panel
does not believe that it is."
"If it were the case that the Respondent’s portfolio comprised
the Domain Name and the objectionable domain names cited in the
Complaint and no others, the Panel might have been inclined to draw
the inference contended for by the Complainant, but, as the
Respondent is a domain name dealer, manifestly that is not the case
and the Panel is not prepared to draw that inference," it
wrote.
The panel said that Adams's case was helped by the fact that the
word in question was a generic one.
"Where a domain name is a single ordinary English word, the
meaning of which has not been displaced by an overwhelming
secondary meaning, the evidence of abuse will have to be very
persuasive, if it is to be held to be an abusive registration under
the DRS Policy," said the three-member panel.
"In this case the Respondent has not done himself any favours by
having in his portfolio some obviously objectionable names and by
making what appear, in the absence of any supporting evidence, to
be disingenuous, self-serving claims in respect of the domain
name."
"However, it is up to the Complainant to prove, on the balance
of probabilities, that the registration is abusive. While the Panel
has not found this an easy case, the Panel is not satisfied on the
evidence before it that the Domain Name in the hands of the
Respondent is an abusive registration," it said.
