Future Labs wins 'computabits.co.uk' from bold registrant
Nominet.uk has ordered the transfer of 'computabits.co.uk' to the complainant in Future Labs Ltd v Stephen Towse after it found that the complainant has rights in the COMPUTABITS mark and that the respondent's registration of the domain name was abusive.
Future Labs is the owner of the domain name 'computabits.com' and the registered trademark COMPUTABITS. It initiated Dispute Resolution Service Policy proceedings against Towse, claiming that:
- Towse's registration of the domain name 'computabits.co.uk' infringed its COMPUTABITS mark since the domain name was identical or similar to the mark;
- such registration was abusive; and
- Towse was using his site in a manner that was unfairly detrimental to Future Labs' rights (ie, by referring to the COMPUTABITS mark and by using the same blue and grey colour scheme).
Future Labs lost a cybersquatting case against Towse in 2000 involving the same domain name registration. However, at that time, the COMPUTABITS mark was not mentioned on Towse's website, nor was Future Labs' blue and grey colour scheme used. While the Nominet panel ruled that no infringement had taken place, it pointed out that if Towse were to change his website to encompass more of the distinctive features of Future Labs' site, then the outcome could well be different.
In the case at hand, Future Labs submitted that Towse had made his site resemble more closely Future Labs' site. The Nominet panel agreed. It concluded that Future Labs has rights to the domain name 'computabits.co.uk', that Towse's registration was an abusive registration and that, as a result, the domain name should be transferred to Future Labs.
This case can be seen as a warning to potential cybersquatters that effective action can be taken to prevent the use of an infringing website without resorting to litigation. In order to avoid infringement, owners of domain names should ensure that both the style and content of their sites are different from that of sites with similar or identical names.
Clive Thorne, Denton Wilde Sapte, London
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10