MySpace loses domain name
Article from our Summer 2008 edition of InsideIP.
Earlier this year MySpace (owned by Rupert Murdoch’s News Corporation) won the right to have the domain name MySpace.co.uk despite another firm (Total Web Solutions Limited (TWS)) having registered it six years before the social networking website launched. The ruling was made by the domain registry Nominet’s dispute resolution service and its independent expert Antony Gold. TWS is a medium sized ISP and had originally used myspace.co.uk to offer e mail services and mini websites to subscribers. However, it had later started to use its domain name address to lead to a ‘parked’ web page with advertisements for social networking sites including MySpace. Mr Gold found that this was done to exploit MySpace’s popularity and was therefore an ‘abusive registration’.
The decision caused alarm within the industry with allegations of Nominet favouring Apple and big business in general. TWS had registered the name before MySpace was launched and was seemingly being punished for what had been a legitimate use of the name but which had changed, through no action of its own, to an abusive use because of the sudden fame of a third party.
TWS appealed within the Nominet dispute resolution service saying it refused to be bullied by one of the largest media organisations in the world. On 18 April 2008 ‘David’ won the appeal, the three person appeal panel finding unanimously in its favour.
The decision turned on two key issues, when the use switched to adverts based on the MySpace name and how much control TWS had over what appeared on the parking site. On the first issue the panel were not wholly convinced that TWS had not commenced use after the explosion in popularity of MySpace but MySpace had not put forward sufficient evidence to support the contrary finding. On the second issue, the panel found that the adverts had changed to reflect the popularity of MySpace but that this had happened automatically as a result of the algorithms used by the parking company. TWS had not interfered with the content of myspace.co.uk including when the adverts relating to social networking began to appear. MySpace claimed that TWS should have exercised control over the content of the adverts. The panel however found that registration of domain names is still a first come first served system and they were reluctant to impose any such duty on a registrant who, in good faith, was lucky enough to register a name which then became popular, provided he did nothing to exploit his position.
The case was compared to the decision by Nominet in 2005 to award the itunes.co.uk domain name to Apple. The domain name was registered two weeks after Apple made a trade mark application for itunes, although the registrant claimed not to be aware of the application. The registrant had at one time tried to sell the name to Napster and had gone so far as to redirect its itunes.co.uk visitors to the Napster website.
The appeal panel in the MySpace case recognised that a registrant’s duty to monitor and control the content of its site might be different in cases of trade mark infringement or passing off. As there is no further layer of appeal in the Nominet system MySpace will now have to go to the High Court and pursue a passing off action if it wants to take matters further.
The lesson for David seems to be that he can take advantage of Goliath’s fame provided he acts in good faith in making the registration and then does not change its use or otherwise do anything actively that might exploit that fame. There is no duty, at least as far as the domain name registration is concerned, to actively monitor or control the content of the website to prevent exploitation of another’s sudden popularity.