Monday, 1 June 2009

Oasis online marketing results in domain name loss

Brand owners tend to have a high success rate at recovering domain names featuring their trade marks where they are registered by cybersquatters or domainers. However, Fashionista has come across a recent decision of the Appeal Panel of Nominet's Dispute Resolution Service (DRS) overturning its earlier decision requiring the transfer of the domain name to the retailer.

At the outset, the case appeared to be typical: The registrant was using the domain to point to a parking page displaying sponsored links which, amongst several other links relating to women's fashion, included links to Oasis' official website. Oasis filed a complaint with Nominet DRS arguing that the registration and use was "abusive" and seeking a transfer. The Respondent failed to respond, and given the evidence filed by the retailer, the Nominet expert found the registration abusive and ordered a transfer of the domain name.

The registrant subsequently appealed and asked the Appeal Panel to accept late evidence as his Reply (He argued that the paper copy of the Complaint had been sent to an old address and he had overlooked the email copy). The new evidence included a statement from (a domain parking company) explaining that the sponsored links appearing on the website accessed via the domain name were automatically generated based on, among other things, the keywords purchased by third parties for the domain name. Since Oasis the retailer had purchased keyword advertising with Yahoo for the terms "" and "", it was the retailer's own action which had caused the parking page to link to clothing retailers including their own website. The registrant claimed not to have been aware of Oasis the retailer when he originally purchased the domain name, and said he had plans to use the domain for a financial services site.

When considering this new evidence, the Appeal Panel did some of its own research and found that the retailer's website used metatags which included the domain name. It concluded that "this information tends to confirm the thrust of the allegations made by the Respondent - namely that the Complainant (the retailer) is itself seeking to use the domain names and to attract traffic to its own site". Further, although additional evidence is not normally admissible in the course of an appeal, in this case the Appeal Panel was prepared to use its discretion to admit the evidence since to do otherwise would deprive the registrant of a valuable asset.

This is the first case Fashionista has seen where a registrant has relied on the brand owner's actions to overturn a negative decision. The messages are clear: (1) try to secure the key domain names for your brand at the outset, and (2) before you take action to recover a domain, ensure your legal team knows the full extent of any marketing activity surrounding the domain, whether as a metatag or keyword before any complaint is filed.