MySpace Inc v Total Web Solutions Ltd

Factual and Procedural Background

This dispute concerns the domain name myspace.co.uk registered by the Respondent in August 1997, long before the Complainant's business was established. The Respondent provided internet services including webspace and email hosting associated with the domain name. Over time, the domain was connected to revenue-generating parking pages operated by a third party, Sedo, with automated links that increasingly referenced the Complainant’s business following its rise to prominence around mid-2005. The Complainant, owner of the MYSPACE trademark registered in December 2006, sought transfer of the domain name alleging abusive registration and use. The Respondent contested these claims, asserting prior legitimate use and denying abusive intent. Procedurally, the dispute was first decided by an Expert appointed by the Nominet UK Dispute Resolution Service, followed by an appeal heard by a three-member panel. The appeal process involved submissions from both parties and requests for additional submissions, some of which were declined by the Panel. The decision was made pursuant to the Nominet Dispute Resolution Service Policy and Procedure.

Legal Issues Presented

1. Whether the Complainant has enforceable rights in respect of a name or mark identical or similar to the disputed domain name.
2. Whether the registration and/or use of the domain name by the Respondent constitutes an Abusive Registration under the Nominet Dispute Resolution Service Policy.
3. Whether the Respondent’s use of the domain name after becoming aware of the Complainant’s rights took unfair advantage of or was unfairly detrimental to those rights.
4. Whether automated changes in the content of the domain’s parking page, controlled by a third party, amount to a change in use rendering the registration abusive.

Arguments of the Parties

Respondent's Arguments

• The Respondent registered the domain long before the Complainant existed and has continuously used it for legitimate purposes including webspace and email services.
• The Respondent denies any change in use of the domain since becoming aware of the Complainant and asserts that the content changes were automated by Sedo, not controlled by the Respondent.
• The domain name is descriptive and the Respondent’s use is fair and legitimate, supported by factors in the Policy indicating non-abusive registration.
• The Respondent challenges procedural fairness and neutrality of Nominet staff and the Expert but these issues are irrelevant to the merits of the appeal.
• The Respondent contends that the dispute involves complex issues of contractual rights and goodwill that are unsuitable for resolution under the Dispute Resolution Service.
• The Respondent relies on precedent where descriptive domain names used without knowledge of the Complainant’s rights were found to be fairly used.

Complainant's Arguments

• The Complainant holds trademark rights in MYSPACE which are not wholly descriptive and are enforceable.
• The Respondent had knowledge of the Complainant’s rights prior to the complaint and the use of the domain name is abusive as it takes unfair advantage of those rights.
• The Respondent’s use of the domain name causes or is likely to cause confusion, despite lack of direct evidence of confusion.
• The Respondent changed the use of the domain by connecting it to a parking page with links referring extensively to the Complainant, thereby exploiting the Complainant’s reputation.
• The Respondent is responsible for the content of the parking page and failed to remove offending links once aware of them.
• The Complainant rejects the Respondent’s claim of descriptive use and asserts the services offered by the parties are distinct.
• The Complainant submits that the dispute falls within the scope of the Policy and is appropriate for resolution by the Dispute Resolution Service.

Table of Precedents Cited

Court's Reasoning and Analysis

The Panel first confirmed that the Complainant holds rights in a mark similar to the disputed domain name and rejected the Respondent’s argument that the mark is wholly descriptive. The key issue was whether the domain name registration or use was abusive. The Complainant did not allege abusive intent at registration, focusing instead on use after becoming aware of the Complainant’s rights.

The Panel examined the timeline and found insufficient evidence to conclude that the Respondent became aware of the Complainant before the publicity surrounding the Complainant’s acquisition in July 2005. The Respondent’s claim of no change in use was supported by evidence that the domain resolved to automated parking pages operated by Sedo, with no direct control exercised by the Respondent over link content.

The Panel noted the ambiguity regarding the date the domain was connected to a parking page dedicated to the disputed domain name, but resolved doubts in favor of the Respondent due to lack of contrary evidence. The Panel accepted that automated changes in parking page content reflecting increased prominence of the Complainant did not constitute active exploitation by the Respondent.

While the Complainant cited a WIPO decision imposing responsibility on registrants for parking page content, the Panel distinguished that case on facts, noting the Respondent’s lack of knowledge and control. The Panel expressed reluctance to impose a duty on a registrant who registered in good faith and did not actively exploit the domain’s increasing notoriety.

The Panel concluded that the dispute involves complex factual and legal issues better suited for resolution by courts rather than the Dispute Resolution Service. The Panel found that the Complainant failed to prove on the balance of probabilities that the domain name was an Abusive Registration under the Policy.

Holding and Implications

The Panel ALLOWS THE APPEAL and directs that NO ACTION be taken in respect of the Complaint.

This decision results in the domain name remaining with the Respondent. The Panel emphasized the limits of the Dispute Resolution Service in resolving complex disputes involving competing rights and factual uncertainties, leaving the Complainant free to pursue litigation if desired. No new precedent was established; the decision reiterates established principles regarding the burden of proof, the definition of abusive registration, and the scope of administrative domain name dispute resolution.