TMO Reports - iTunes.co.uk Owner to Appeal Domain Order to High Court

by , 9:45 AM EST, March 28th, 2005

The owner of the Web domain itunes.co.uk has decided to appeal a ruling to Britain's High Court after being ordered to turn over the address to Apple Computer last week.

Benjamin Cohen, the domains owner and CEO of CyberBritain Holdings Ltd., defended his appeal saying the decision by the Dispute Resolution Service of Nominet, the UKs domain authority, was "unfair" and "biased towards big business."

"I must admit that we were not expecting the decision by Nominet's appointed expert," Mr. Cohen said in a press statement. "Apple chose to launch the UK brand of "itunes" within the UK with the knowledge that we had owned the name for three years before their USA launch and four years before their launch within the UK."

Nominet ruled last week that by offering to sell the domain name and by continuing to re-direct people from it, Mr. Cohen had abused his registration. The panel also said he was using the domain name in a way which confused people or businesses into believing Apple owned and operated the domain.

"The domain name, in the hands of the respondent (Mr Cohen), is an abusive registration on the grounds of its use in a manner taking unfair advantage of, and being unfairly detrimental to, the rights of the complainant (Apple)," the resolution panel conculded.

Mr. Cohen will challenge the validity of the ruling by Nominet in an application to the High Court for Judicial Review of the case and the process used by Nominet to make domain decisions. Mr. Cohen contends the case is to be the first to question the legitimacy of Nominet's authority to issue ".co.uk" domain names and its ability to come to decisions relating to the disputes between two parties claiming rights to a name.

"We feel that the procedure that Nominet utilizes to settle disputes is unfair and at the expense of legitimate small, British companies," he said. "We have decided to refer the decision for Judicial Review in the High Court with a view to overturn the decision and to make recommendations for improvements to the way that domain name disputes are handled within this country, and ensure that the regulations for domain ownership comply with the Trademark Act."

Apple accused Mr. Cohen back in December of illegally possessing the domain and demanded it be given control of the Web address.

Nominet is the British equivalent of InterNIC in the U.S. which handles domain name registrations.

Mr. Cohen contends he has a strong case against Apple based simply on the fact he bought the domain before Apple filed for a trademark. He said he registered the iTunes.co.uk domain name on November 7, 2000 as one of a series of generic domain names to forward to various parts of what was then CyberBritain’s network of Web sites.

Unknown to CyberBritain because the application was only known to the British patent office, Apple applied for a trademark for the name iTunes on October 27. It was not until December 6 that the application was published in the Trade Marks Journal, some four weeks after Mr. Cohen's company began using the domain. Apple was later granted a restricted trademark on March 23, 2001, which didn't include the use of the phrase 'iTunes' for music products.

On April 16, 2003, Apple applied for a trademark for the name 'iTunes Music Store', but has yet to be granted rights. It wasn't until June of last year that Apple launched its British iTunes online music service.

Apple inaugurated its iTunes music service in the U.S. on April 28, 2003.

CyberBritain now forwards the itunes.co.uk domain name to a music promotion on its associated online shopping Web site, QuickQuid.com.