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Roxio wins napster.co.uk from the Crown

'Abusive registration'

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Roxio, the company behind the newly-legitimised Napster music service, has won a battle for napster.co.uk. The UK's domain name registry ruled that a registration of the name by the Treasury Solicitor was "abusive" and ordered that it be transferred to Roxio.

Shawn Fanning launched Napster.com, the original peer-to-peer music service, in May 1999, only to see it shut down in July 2001 due to the cost of fighting legal battles against the music industry.

The Napster brand was purchased by Roxio, best known for its CD-burning software, and it re-launched the brand last October as the name for its authorised music downloading service.

However, until now, the domain name napster.co.uk has been in the hands of others. It was originally registered in August 1999 by a UK company known as Napster Limited. Completely unconnected with Shawn Fanning or his company Napster Inc, Napster Limited used the name for advertising and to link to a guitar-selling site at www.guitarmogul.co.uk.

In July and August 2003, according to the Nominet report, Roxio contacted one of the Napster Limited directors, John Rackham, alleging that the use of the Napster.co.uk name was abusive, and requested that it be transferred to Roxio. Rackham agreed, but it soon became clear that Napster Limited had been dissolved on 1st April 2003 and that ownership of the domain name had already passed to the Crown.

The Treasury Solicitor acts for the Crown in dealing with assets in which ownership has lapsed, so that was Roxio's next port of call.

The usual procedure where domain names have been transferred to the Treasury Solicitor is for an auction to be held; but there is provision for transfer without auction if a registration can be shown to be abusive.

The Treasury Solicitor's office later wrote Roxio "to confirm that the Treasury Solicitor will not place the domain name for auction on our web site if you [Roxio] refer the matter to the Nominet UK Dispute Resolution Service by 25th October 2003."

Confusingly, once Roxio had filed its complaint with Nominet, the Treasury Solicitor then filed a "Disclaimer," denying that it was the owner of the domain.

The dispute has now been heard, although the Treasury Solicitor did not make any representations to Nominet's expert.

Roxio argued that it had trade mark rights in the Napster name, and that the brand was identical to the disputed domain name. Napster Limited and its director had no rights in the brand, said Roxio, and the "mere incorporation of a company under that name was not sufficient to give rise to a legitimate interest in the Napster name or mark."

Roxio contended that the Treasury Solicitor could acquire no more rights in the domain than were held by Napster Limited, so while the Treasury Solicitor had not intended to use the domain in an abusive manner, Roxio abusive use had continued in practice well into July.

Roxio also argued that as the Treasury Solicitor intended to auction the domain if it won the dispute - at a figure likely to exceed £500 - so it would be profiting from Roxio's goodwill in the name.

With regard to the Disclaimer, Roxio argued that the Crown had waived its right to disclaim by virtue of the letter from the Treasury Solicitor confirming that the domain would be sold at auction unless Roxio succeeded with its complaint.

Steven Maier, the independent expert adjudicating the dispute, accepted that Roxio had trade mark rights in the Napster name and mark. He then had to establish whether the domain was currently "in the hands of" the Treasury Solicitor.

In his opinion, the Treasury Solicitor had shown an "intention to take possession of the domain name, by virtue of its conduct" and the Treasury Solicitor was therefore in possession of the domain for the purposes of the complaint.

But was this possession an "abusive registration"?

Maier agreed that Napster Limited's use of the domain was abusive, representing an "an impersonation" of Roxio, which "was calculated to divert internet traffic intended for the Complainant to a commercial web site connected with Napster Limited."

He continued:

"I am unable to accept, however, that if one owner of a domain name uses it abusively it is automatically an abusive registration in the hands of a subsequent owner. The Complainant's reference to 'title' is misconceived, as the Policy is not concerned with the property rights in a domain name, but rather with the manner of its use in the hands of the party complained against. It is perfectly possible for a domain name to be used abusively by one party, against whom a complainant would succeed, but non-abusively by a subsequent owner, against whom a complainant would not succeed."

However, said Maier, the fact that the Treasury Solicitor intended to sell the domain name, albeit on the open market at the best price, could indicate abuse. He explained:

"There is no evidence that any party other than the Complainant is entitled to use the name or mark. In those circumstances, it is difficult to see that any party other than the Complainant could realistically make use of the mark without such use amounting to passing off, or at least an impersonation of the Complainant."

Maier noted that the Treasury Solicitor conducts its functions "within legislative and other legal constraints" and "in a business-like manner consistent with the public interest." He reasoned that its open sale of the name to the highest bidder "could be consistent with this policy."

Accordingly the expert found that there had been an abusive registration and ordered that the domain name be transferred to Roxio.

See: The Nominet decision

© Copyright 2004 OUT-LAW.com

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