The Coca-Cola Company has failed in an action against a UK individual who had registered the domain namewww.fivealive.co.uk . The case was heard by an independent expert under Nominet’s Dispute Resolution Service (DRS) Policy. The respondent in this case was an individual named Paolo Ciuffa and the domain name was registered in his company’s name, Bo Cat, in 2004. Coca-Cola argued that Mr Ciuffa had no legitimate interest in the domain name and they argued that the only reasonable conclusion to reach regarding the registration of the domain name was that Mr Ciuffa intended to capitalise on their goodwill and divert customers away from them. They said the domain name was disrupting their legitimate business interests and amounted to an “abusive registration”. According to Nominet’s DRS Policy, an abusive registration is one that takes unfair advantage of, or is unfairly detrimental to the complainant’s rights. In his response, Mr Ciuffa claimed that he had registered the domain name with the sole intention of representing and promoting the music artist MC Five Alive. He provided evidence in the form of a MySpace link and recent flyers from events which MC Five Alive had performed at. He denied that it was an “abusive registration”. The appointed expert agreed that whilst Coca-Cola undoubtedly had rights to the Five Alive mark and this satisfied the first part of the test, they had failed to show that the registration was “abusive” – as there was nothing ‘morally reprehensible’ in the respondent’s behaviour. Instead, it was held that there was a perfectly plausible and legitimate explanation for the registration, supported with evidence, and the expert had no reason to disbelieve Mr Ciuffa – so the second part of the test was not satisfied – and the case failed.
From an article by Richard Burton at http://www.dyoung.com/trademarknewsletter-september2010