Intellectual Property/United Kingdom

Background

Research In Motion Ltd v Field(1) is another decision which should encourage brand owners in their attempts to recover domain names which include their trademarks in anything other than a purely descriptive sense. A domain name which includes a trademark must either (i) combine that trademark with a genuinely distinctive additional element, or (ii) use the trademark only as part of a clear and obvious description of what the website to which the domain name relates actually does. If the domain name fulfils neither criterion, its incorporation of the trademark may give the impression that the website to which the domain name refers is in some way official or connected to the trademark owner. Such a registration may well be deemed abusive, in which case the domain name will be revoked or transferred to the trademark owner.

This decision highlights the danger for a retailer of registering a domain name under which goods or services related to another party's products are lawfully supplied, where (i) the dominant or distinctive element of the domain name is the trademark of the other party, and (ii) the website to which the name relates suggests an association with that party. The respondent was an unauthorized but lawful retailer of BlackBerrys - mobile phones with wireless email access and other facilities - and related accessories. Her website used the domain name 'blackberryworld.co.uk'. Nominet directed that this domain name be transferred to the owner of the BLACKBERRY trademark on the basis that the domain name was neither purely descriptive nor sufficiently distinctive.

Facts

Research In Motion (RIM) is the well-known provider of BlackBerrys and software applications marketed and supplied under the BLACKBERRY trademark. Michelle Field's business sold accessories for BlackBerry devices. She launched the website at 'blackberryworld.co.uk' in October 2004 as a trading outlet and offered training services in relation to BlackBerrys. Field was essentially an unofficial retailer of BlackBerry products and services. She was not licensed or authorized by RIM to use the BLACKBERRY trademark in any way.

RIM brought the complaint under Paragraph 2(a) of the Nominet Dispute Resolution Service (DRS) Policy on the grounds that the domain name was similar to RIM's trademark and that the registration was abusive as defined in Paragraphs 1(i) and (ii) of the policy. An abusive registration means that the domain name in question: (i) was registered or otherwise acquired in a manner which, at the time of registration or acquisition, took unfair advantage of or was unfairly detrimental to the complainant's rights; or (ii) has been used in a manner which takes unfair advantage of or is unfairly detrimental to the complainant's rights.

RIM claimed that Field used the domain name to create a misleading association with RIM and, in doing so, unfairly disrupted its business and tarnished the BLACKBERRY mark. In particular, it was alleged that Blackberry World misrepresented itself as an authorized BlackBerry supplier and used the domain name in ways which took unfair advantage of and were detrimental to RIM's business. It was alleged that Blackberry World:

used the domain name as a trademark;

competed with RIM in the provision of services; and

failed to disclose its independence from RIM when offering goods and services.

Field contended that a formal association had never been claimed and that the domain name had been registered in good faith. Furthermore, Field claimed that her business did not compete with RIM, as it targeted different consumers and therefore had not disrupted RIM's business.

Decision

It was common ground that the domain name was similar to the BLACKBERRY mark. Therefore, the issue was whether it is permissible for a retailer which supplies goods and services in respect of another party to register and use a domain name whose dominant and distinctive element is the trademark of the other party.

The expert's approach followed Seiko v Wanderweb.(2) Although the appeal panel refused to lay down general rules on when a trademark may be incorporated legitimately into a domain name, preferring to let each case be decided on the specific facts, it suggested that where evidence exists that the domain name makes or is liable to be perceived as making the representation that there is something approved or official about the website, this constitutes unfair advantage or unfair detriment under the terms of the Nominet DRS Policy. Therefore, although under the policy an abusive registration must be a registration in a manner which actively takes unfair advantage or is unfairly detrimental, in the decision in Seiko, which was relied on in the present case, it was determined that the mere liability that a perception of official endorsement or approval might arise is enough to constitute actual unfair advantage or detriment. It was concluded that the domain name 'Seiko-shop.co.uk' was liable to be perceived as making the representation that there was something approved or official about the website, and that this constituted unfair advantage or unfair competition. On the evidence, the expert found that Field had used a sign including the words 'Blackberry World' as a trademark, not a descriptor; this was demonstrated by the way in which the sign was used on the website and on business stationery. She had also set up a limited liability partnership called Blackberry World LLP, although this had been dissolved by the time the dispute commenced. The expert stated that the BLACKBERRY trademark was clearly being used within the domain name "in such a way that it may create the impression that there is some form of commercial connection between the respondent and complainant" (emphasis added). The possibility of such an impression being created was enough to constitute abusive registration.

The expert found that the impression that a commercial relationship existed between the trademark owner and the domain name holder was liable to arise because the addition of the word 'world' to the BLACKBERRY trademark did not go far enough in differentiating the two businesses. Merely adding the word 'world', particularly when taken together with the other uses of the phrase 'Blackberry World', was not enough to differentiate the domain name. Therefore, the expert concluded that the domain name was an abusive registration in the hands of Field on the grounds that it had taken unfair advantage of or had been detrimental to RIM's rights in the BLACKBERRY trademark.

Comment

Where a domain name uses the trademark of another party and that mark is being used in a more than merely descriptive manner, a Nominet expert or appeal panel is likely to consider its registration abusive. Had Field not used the domain name in the manner of a trademark, but relied on it purely for descriptive purposes, the expert would undoubtedly have reached a different conclusion. The real question is what constitutes descriptive use. In Seiko v Wanderweb the independent expert suggested that an example of a descriptive use of the trademark would be 'we-sell-seiko-watches.co.uk', but the addition of the word 'shop' was insufficiently descriptive. Similarly, the owner of the VODAFONE trademark achieved the transfer of 'vodafoneretail.co.uk'. Domain names using a trademark must go some way in order to be considered sufficiently descriptive.

The requirements of the Nominet DRS Policy are probably less stringent than those of the Uniform Domain Name Dispute Resolution Policy, which governs all '.biz', '.com', '.info', '.name', '.net' and '.org' top-level domains. The latter policy requires a complainant to show that the domain name holder has no rights or legitimate interests in a mark and has registered and used a disputed domain name in bad faith. In 2001 the administrative panel refused to transfer the domain name 'mercedesshop.com' to the owner of the MERCEDES trademark . However, since then the panel's decisions have shifted towards trademark holders - 'volvoinsurance.com' was transferred to the owner of the VOLVO trademark and 'toyota--parts.com' and 'lexus--parts.com' were transferred to the owner of the TOYOTA and LEXUS trademarks.

If using a trademark in a domain name it is inadequate merely to add a generic descriptor, such as 'shop', 'retail', 'world' or 'parts', to that trademark. A Nominet expert has indicated that it is best practice for non-trademark owners not to include trademarks in top-level domain names, but to use brand-name 'shops' within individual websites if trademarks are to be used at all. An example of an acceptable formulation might be 'www.nameofbusiness.co.uk/blackberry' where ''nameofbusiness.co.uk' is the top-level domain.

It appears that a website owner may still legitimately use trademarks in a metatag to attract traffic to the website. In Seiko v Wanderweb it was found that:

"Any legitimate trader… might reasonably use trademarks of the goods it sells as metatags. Such use would appear to properly fulfil the purpose of identifying the kind of goods or services on offer [under the Trademarks Act 1994, Section 11(2)(b)]. Any legitimate retailer can use metatags and there is no inherently unfair exclusive advantage for one relative to another."

This makes it even harder to justify the use of a trademark in a domain name.

If a trademark is included in a domain name registered by a party other than the brand owner, there is in practice a predisposition to assume that such registration is abusive. In order to find an escape route through descriptive use, the description must be so plain and simple that the domain name is unlikely to be particularly attractive to either a user or a business owner. The domain name 'blackberryworld.co.uk' is more attractive than 'unauthorized-blackberry-products-are-sold-here.co.uk'. An equally unattractive option is to combine the trademark with an unconnected and distinctive word in the domain name in such a way that the trademark becomes neither the distinctive nor the dominant element. The reason that such domain names are unattractive is that they lessen the association with the included trademark, which is precisely why registrations which seek to promote an association are considered abusive. Brand owners may argue that retailers' use of their marks in domain names always amounts to trademark use and inevitably forms an association with their brands. The domain name dispute resolution bodies have not reached that point yet. Their decisions have moved nearer to this view, but it is difficult to predict any further shift.