Stockport's Total Web Solutions (TWS) registered the domain name
in 1997, six years before MySpace was founded and nine years before
it launched in the UK.
MySpace Inc. accused TWS of using the .co.uk domain name to
profit from its trade marked brand and won its case at the Nominet
arbitration panel. TWS appealed, though, and won the appeal and
will keep the name.
But the appeal panel expressed "grave suspicion" about TWS's
activity and told MySpace that it should take the matter to the
courts if it wanted to pursue the case further.
The case centred on whether TWS changed the terms on which the
site took advertising, connecting it to a Sedo advertising system
that will have generated advertising relating to the 'myspace'
domain name, before or after a wave of publicity about MySpace in
July 2005. Rupert Murdoch's News Corporation acquired MySpace in
that month for $580 million. TWS said that it changed the term
before it had heard of MySpace.
"While the Panel has grave suspicions, there is simply
insufficient material before the Panel for the Panel to conclude
that [TWS] is not being truthful on this point," said the
panel.
"The Panel concludes that the just result is to leave it to
[MySpace] to litigate the issue, if it so wishes. By this means,
any uncertainties as to how and when changes to the website were
made can be resolved by way of full disclosure and tested
evidence," it said.
MySpace had said that it believed that the change in the way
advertising was generated by the site had been made when TWS knew
about its existence.
"Had this change taken place after [TWS] had become aware of
[MySpace], the Panel would have had evidence to support a
conclusion that the change had been motivated by a desire to profit
on the back of the reputation and goodwill of the [TWS]," the panel
said.
A .co.uk domain name can be forcibly transferred if the person
demanding it has rights in the name and if the domain name was
registered or is being used in an abusive manner.
MySpace had argued that TWS changed its site to take advantage
of the renown of its business once it became aware of it.
TWS said that it had a legitimate reason to register the domain
name in the first place and that 18 of its customers still used
their @myspace.co.uk email addresses. It said that the web page was
'parked', which meant it was turned over to the display of adverts
which were controlled by a third company, Sedo.
Once connected to Sedo's system it would turn up adverts
connected to the domain name or page content. The panel noted that
many of the adverts related to MySpace but rejected the idea that
this proved abuse.
"The Panel is satisfied that whether or not [TWS] had the
opportunity at any time to control the nature of the links posted
on those pages, [it] has not in fact exercised any such control,"
said the ruling. "The Panel accepts [TWS's] claim that the links
have at all material times been generated automatically by a
standard software package operated by or on behalf of Sedo, the
entity hosting the relevant pages."
The panel overturned the ruling of a previous panel, which said
that the existence of adverts relating to MySpace on the page was
evidence of abusive use.
