Retailer cites own keyword advertising as evidence of domain name owner's abuse

The appeal panel of Nominet's dispute resolution service, which rules on disputes over ownership of domain names ending .uk, has overturned an earlier ruling and blocked the clothes shop from gaining control of the name.

The site carries advertising for women's clothes and the panel said that the name could not be taken from its current owner on the basis that this advertising was an abuse of Oasis's rights because the advertising appearing there was as a result of Oasis's actions.

The oasis.co.uk site is 'parked' with a company called Imodo. That means that Imodo populates the site with advertising automatically and the revenue is shared between the company and the site owner.

A Mr J Dale owns the address oasis.co.uk and he told that panel that the fact that the site carries clothing advertising is Oasis's fault, not his.

"The results of innocent PPC [pay per click] use changed – not because of any changes made by me, but rather (confirmed by Imodo) because [Oasis] appears to have purchased the domains ('oasis.co.uk' and 'oasis.com') as keywords for its paid advertising," said Dale in his submission to the panel. "I have done nothing to encourage the associations with clothing that have since appeared."

"Records (including Yahoo search results) indicate that the complainant has purchased advertising using the domains themselves as keywords – making it impossible for the parked page to avoid showing the adverts that they now complain about," argued Dale. "This is not a case of my seeking to take advantage of their trademark – but rather the parking software being driven away from the other more general adverts that previously appeared."

Imodo's advertising system is linked to Yahoo!'s. Oasis did not deny that it had paid Yahoo! for the right to have its advertising linked to searches for the terms oasis.co.uk or oasis.com. It said that the allegation was "not supported by evidence" but did not deny the truth of it.

"This did not seem to the Panel to be a satisfactory response," said the panel's ruling. "The Panel accepts [Dale's] evidence that [Oasis] has itself used the names of domains belonging to [Dale] (oasis.co.uk and oasis.com) as keywords in advertising with Yahoo."

The panel looked at the html code that made up Oasis's own website and found that the terms oasis.co.uk and oasis.com, which Dale also owns, appeared in that code as meta-tags, which are terms designed to attract the attention of search engines when those terms are searched for.

The panel accepted that Oasis's practices contributed to the appearance of clothing advertising on Dale's site.

"The Panel accepts [Dale's] evidence (which does not seem to be challenged) that the content of the parking page is automatically generated by software which is using the terms oasis.co.uk and oasis.com as some form of input and which is linked to results that Yahoo returns in respect of searches on such terms," it said.

"That in itself is not objectionable given those domain names belong to the [him]. The Panel infers that this, when combined with the way in which [Oasis] has paid Yahoo for use of those terms as keywords, has at least to some degree caused the parking page to generate links relating to women’s fashion and/or the [Oasis'] site," it said.

The panel said that Oasis's behaviour did contribute to what it says is Dale's abuse of its rights to the name Oasis, to which it holds a trade mark for clothing.

"The Panel believes it is clear that this cannot be Abusive Behaviour by [Dale]. He has said he did nothing to alter the behaviour of the site and if a significant cause is the actions of [Oasis] it cannot rely on those as evidence of Abusive Behaviour by [Dale]," it said.

The panel ruled that Dale could keep the domain name. It said that the domain name system was a first come first served one, and, quoting from a panel ruling in the case of myspace.co.uk, said that people should be allowed to keep names that are associated with famous brands "provided that [they do] nothing actively to exploit [their] position".