Oasis causes its own downfall in 'oasis.co.uk' dispute

United Kingdom
In Oasis Stores Ltd v Dale (Case DRS 6365), a Nominet panel has allowed an appeal against an expert’s decision in which the latter had transferred the domain name 'oasis.co.uk' to Oasis Stores Ltd.        
Oasis, which runs a chain of women’s clothes shops, owns a number of registered trademarks that comprise or incorporate the word 'oasis'. In October 2008 it filed a complaint with Nominet against the registration of 'oasis.co.uk'. The domain name was registered some time before August 1996. At the time of the complaint, the website was hosted by Imodo.com Inc, and displayed a number of sponsored listings for women’s fashion, including Oasis's products and those of others.

The respondent failed to answer the complaint and the expert duly ordered the transfer of the domain name to Oasis. The respondent, who said that the posted copy of the complaint was sent to an out-of-date address and that an emailed copy was overlooked, appealed.
The core of the respondent’s defence on appeal was that the particular use that had occurred of the domain name - in terms of the links displayed on the parking page hosted by Imodo - had been caused by Oasis. 

In particular, the respondent argued that Oasis was paying Yahoo! for the use of keywords comprising the text strings 'oasis.co.uk' and 'oasis.com', with the effect that the search results were weighted in some way to the sites that the advertiser selected to associate with such keywords – in this case, Oasis's own website. The parking page displayed advertising which was “extrapolated” from the search results that Yahoo! returned for the domain name in question. Therefore, it was Oasis's own behaviour that caused the parking page to start displaying the links to which Oasis objected.    
There was no evidence (beyond the evidence of how the parking page behaved) that the respondent purchased the domain name with any intent to target Oasis's business or to associate itself with that business. The question of whether the registration was abusive thus turned on the use which had been made of the domain name since the respondent acquired it by using it as a parking page. This, in turn, depended on how that parking page had behaved and what its contents had been.

The panel found the respondent’s arguments compelling, and held that Oasis had not given a full and comprehensive rebuttal of them. Accordingly, the panel overturned the original decision. 
Oasis appears to have fallen into the trap of merely denying - rather than rebutting with evidence - the respondent’s allegations. The decision should serve as a lesson to brand owners of the dangers of not ensuring that their IP portfolios, including domain names, correspond with their marketing strategies - in this case the buying of keywords from search engines like Yahoo! and Google. Failing to have a comprehensive set of domain names, in generic and country-code top-level domains, reflecting the brand and its trademark registrations can have unforeseen consequences, particularly where the mark consists of generic terms. 

Brand owners may argue that registrants should know that using domain names to resolve to parking sites that attract keyword-generated advertising is likely to generate links to brands. Under Paragraph 4(e) of Nominet’s Dispute Resolution Policy, an expert is expected to take into account “the nature of the advertising links on any parking page associated with the domain name”. However, as demonstrated by this latest decision, this is not a straightforward exercise.        

Bratin Roy, McDermott Will & Emery UK LLP, London 

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