Saturday 18th August 2018

UK domain registry rejects attempt by US organization to seize valuable domain names

An attempt by a US-based organization to seize the domain names forte.co.uk and forte.uk has been rejected by Nominet.
Jason Smith
by on 11th June 2018

Nominet, the organization responsible for administering .uk domain names, has rejected an appeal tabled by the owner of the trademark “forte” to seize the domain names forte.co.uk and forte.uk from its current owner, Successful Internet Ltd.

The complaint was originally rejected on 23rd March after the expert administering the case found that while the complainant, Illinois Works Inc., a US-based organization, had a trademark on the term “forte,” it had failed to establish that Successful Internet Limited had knowledge of its trademark.

Furthermore, the fact the domain names were listed for sale did not indicate that they were what Nominet refers to as “abusive registrations.”

Forte.co.uk was registered in September 2004 and currently points to a domain parking page that generates revenue from users clicking on paid advertisements.

The domain was listed for sale and the Respondent was willing to listen to offers above £1,000, however following an attempt by Illinois Works to acquire forte.co.uk for the listed price, Successful Internet Limited replied stating it would only sell the domain name for £15,000-£20,000.

The latest case, which was thrown out on 6th June, was put before Nominet’s appeal panel.

Illinois Works claims that the respondent must have been aware of its trademark when it registered the domain name in 2004.

It claims the respondent has used the domain to divert traffic away from its genuine forte website to the domain parking page hosted by forte.co.uk. It also points to the timing of the registration of forte.uk, which occurred shortly after the claimant contacted the respondent to acquire forte.co.uk for £1,000.

Furthermore, it pointed to the respondent’s pattern of registering domains associated with well-known trademarks, including bently.co.uk, macafee.co.uk and rollingstone.co.uk. The Respondent claims these are family name registrations.

Meanwhile, the respondent stated that it is a company of “good standing” and runs a family business that maintains a portfolio of over 5,000 domain names.

It claims that its portfolio predominantly comprises generic, dictionary, first name and surname domain names and that the registration of forte.co.uk and forte.uk are examples of registrations of dictionary words.

It also denied any knowledge of the Complainant’s business prior to the Complainant’s communication about the acquiring the domain name. While the Respondent conceded that the domain registration is identical to the trademark, it also states that many of the trademarks are for stylized forms of the word “FORTE.”

It deems that this isn’t surprising as the term “forte” is a dictionary word. The Respondent also claims that many of the trademarks were registered after the registration of forte.co.uk in 2004. Moreover, it states there are at least 254 other domain names registered in the UK containing the word “forte.”

According to the respondent, pay-per-click revenues from its parked pages amount to £2,700 per annum while the cost of domain registrations is £20,000 over the same timeframe.

In its ruling, the appeal panel stated, “The Appeal Panel concludes that the Complainant has Rights in a mark which is identical to the Domain Names but has failed to show that the Domain Names are Abusive Registrations. For the foregoing reasons the Appeal Panel orders that the appeal be dismissed.”