Most of us in the United Kingdom are extremely familiar with the "MAESTRO" trade mark. It is the leading debit-card brand in the UK, and is more than likely emblazoned on a card tucked away in many of our wallets. It may therefore come as a surprise that the owner of this trade mark, Maestro International Inc (a subsidiary of Mastercard), has been unsuccessful in its attempts to secure a transfer of the domain name "maestro.co.uk". A recent decision by a Nominet appeal panel denied this transfer, affirming the Nominet expert's first instance decision.
Nominet is the UK organisation responsible for administering ".uk" country-code domain names. Any person seeking to use Nominet's procedures in relation to offending domain names must prove firstly that it has enforceable rights in the domain name, and secondly, that the domain name, in the hands of the registrant, is an abusive registration.
In this case, Maestro International's rights were not in dispute. The decision turned on whether or not the registration was abusive within the meaning of the Nominet policy.
Maestro International's arguments that the domain name was abusive included the grounds that:
the registrant had engaged in a pattern of abusive registrations, having between May 2004 and May 2005 registered a number of domain names, including well-known trade marks of others (such as beverlyhillscop.co.uk and forrestgump.co.uk); and
in response to an enquiry from a Maestro International representative, the registrant stated that he would only consider selling the domain name "for an exceptional offer".
The registrant countered that he was unaware of Maestro's brand, and registered the domain name with the dictionary meaning of the word in mind. No live services were provided by the registrant under the "maestro" brand, although the registrant asserted that he had made a significant investment into setting up business under this brand. He justified his choice of "maestro" by saying he had "plans to use it for musical downloads, educational and tuition services".
The panel was sceptical of the registrant's claims that he had not heard of the "Maestro" brand or that he had invested into the brand. They noted that the registrant's explanations for the choice of "maestro" appeared to be specifically pertinent services to the dictionary meaning of the word (the implication being that the explanations were conceived after the fact).
However, the panel found that when the trade mark in...