In October 2000, Apple obtained the trade mark ITUNES. However, it did not start operating its iTunes service using the domain itunes.com until June 2004, when it quickly built up a huge international reputation. The respondent, a company called Cyberbritain, registered the domain name itunes.co.uk in November 2005. This was after Apple’s trade mark registration but before Apple began operating the iTunes service.
Originally Cyberbritain had used the itunes.co.uk domain name to direct users to its legitimate music download site. However, it then used it to direct users to its gambling website and, in October 2004, it directed users to the Napster website, a direct competitor of iTunes. Apple offered to purchase the domain name for $5,000 US Dollars. Cyberbritain offered to sell it for £50,000. At this stage, Apple commenced the Nominet dispute resolution procedure.
The Nominet expert found that the offer to sell the domain name for £50,000 did not, by itself, take unfair advantage of Apple’s rights. The offer was made in response to an approach from Apple to purchase the domain name. However, the expert found that Cyberbritain had taken unfair advantage of Apple’s rights by offering to sell the domain name to Napster and by redirecting users to Napster’s website. Such action allowed a competitor of Apple to benefit from the goodwill that Apple had built up in the iTunes’ name. Apple was therefore awarded the transfer of the domain name itunes.co.uk.
This article first appeared in our Technology Annual Review, March 2006. To view this publication, please click here to open a new window.