Second .uk domain name decision under new DRS

Offering a domain name for sale can be an abusive registrationNominet UK, the organisation, which manages the .uk Top Level Domain, has published its second .uk domain name decision under its new Dispute Resolution Service. The independent expert ruled that the domain name, bluemartini.co.uk, was an abusive registration, and directed Nominet to transfer the domain name to the complainant.

Facts

The dispute concerned the domain name, bluemartini.co.uk, registered to Prophesysoft. The complaint was lodged on behalf of Blue Martini Software Inc and Blue Martini Software Limited a software company, which is a publicly traded company on the NASDAQ and the registrant of bluemartini.com. The domain name bluemartini.co.uk resolved to a website which invited users to purchase the domain name by way of making “an anonymous offer of at least US$200.

The respondent made no submissions in the dispute.

The test

In order to pursue a claim successfully, Nominet UK’s new DRS requires that a complainant has to prove, on the balance of probabilities, that

i. it has rights in respect of a name or mark identical or similar to the domain name; and

ii. the domain name, in the hands of the respondent, is an abusive registration.

A non-exhaustive list of what can constitute an “abusive registration is set out in Nominet’s DRS policy, and includes registrations which have been made purely to sell at an inflated fee, registrations which unfairly disrupt a business, and blocking registrations.

Decision

The independent expert found that:

a) the complainant’s incorporation as Blue Martini Software Limited, the promotion of software under the Blue Martini name through the website www.bluemartini.com and the application for the trade mark Blue Martini in the UK were consistent with and gave weight to the complainant’s assertion that it has rights in the name which is identical to the domain name.

b) since the domain name resolved to a website which invited offers for the domain name and, in certain places on the site, stated that the minimum offer should be US$200, in the absence of any response from the respondent, it was reasonable to infer that the out-of-pocket costs which the respondent has incurred amount only to the registration fee;

c) no evidence had been provided by the respondent to suggest the purpose for which the domain name was registered, it was therefore difficult to envisage any other purpose for registering this made-up domain name other than to sell it to the business trading as Blue Martini – i.e. the complainant.

The independent expert therefore found that the domain name was an abusive registration. On the balance of probabilities,the respondent registered the domain name primarily for the purpose of selling the domain name to the complainant, or a competitor of the complainant, for valuable consideration in excess of the respondent's out-of-pocket costs.Consequently, the independent expert directed that the domain name be transferred to the complainant. Under the DRS, Nominet UK will effect this transfer 5 days after the publication of the decision, and subject to the respondent not exercising his right to appeal during this time.

The full text of the decision can be found at http://www.nominet.org.uk/drs/decisions.html

To access a previous Law-Now article on the Dispute Resolution Service please click here Click here or for earlier commentary on Nominet’s decisions Click here

For further information on how Nominet UK's new DRS may affect your .uk domain names, please contact Stephen Whybrow by telephone on +44 (0)20 7367 2183 or by e-mail at [email protected], Susan Barty by telephone on +44 (0)20 7367 2542 or by e-mail at [email protected] or Lucy Kilshaw by telephone on +44 (0)20 7367 2376 or by e-mail at [email protected].