Apple 'cult' wins iTunes domain battle

[Mr. Deleted]

I have been watching for news on this, so here it is, but it is not what I wanted to hear! I was hopeing that he could keep it, since they did not even release the tradmark info till after the registration of the domain, and they were just trying to bully him into giving it to them for 5K UK

http://www.vnunet.com/news/1161963
UK firm plans to fight Nominet decision
Iain Thomson, vnunet.com 16 Mar 2005
ADVERTISEMENTApple has won the rights to the www.itunes.co.uk domain, despite it being registered by a UK company years before the US firm launched its music download service.

The domain was registered on 7 November 2000 by Benjamin Cohen, the chief executive of CyberBritain Holdings, long before the launch of iTunes on 9 January 2001.

Cohen offered to sell the site in October 2004, by then getting over 4,000 hits a day, to Napster, but the offer was declined. Apple offered him $5,000 for it but he asked for $50,000.

But domain registrar Nominet has ruled that the name registration was abusive and that Apple had the rights to the brand. Cohen has vowed to appeal against the decision.

During the dispute some bizarre claims were made about Apple.

"The Respondent expressly said that the Expert appointed by Nominet should not be an Apple Mac user, because in the view of the Respondent there is a 'cult' associated with the products of the Complainant, which attract fanatical users," said Claire Milne, Nominet's independent expert adjudicating the case.

"I have already confirmed my independence and impartiality for the purpose of this appointment. Nominet procedures do not let either party vet experts. However, in case either party is interested, I also confirm that I do not own or use, or plan to own or use, any of the products of the Complainant."

It has been a good week for Apple in the courts. In the US this week it won the right to identify staff who leaked new product drawings to Apple fan sites.

http://www.nic.uk/DisputeResolution/Decisions/Drs02223Itunes.html

 

[scottatmu]

I think that's complete crap! Maybe the owner did register the domain because he knew iTunes was going to be unveiled by Apple, but, at least according to the US Trademark search, Apple filed their 'trademark' application for iTunes on January 9, 2001, 2 months after itunes.co.uk was registered. Maybe I'm reading it wrong, but with that it seems like the domain was registered before Apple even Trademarked iTunes. Tried to search for the Copyright of iTunes, but couldn't find anything.

 

[Mr. Deleted]

http://www.quickquid.com/index.php?action2=itunescouk

UPDATED: David Versus Goliath Battle Over ITUNES.co.uk Domain Name

Apple Computers Takes on Small Business Over the Ownership of ITUNES.CO.UK, case to follow hot on the heels of Office of Fair Trading criticism of Apple’s pricing policy.

CyberBritain Holdings Ltd, the internet company founded and run by Benjamin Cohen (founder of SoJewish and one time teenage dot.com millionaire), registered the domain name ITUNES.co.uk on the 7th November 2000, as one of a series of generic domain names to forward to various parts of what was then CyberBritain’s network of websites. From 9th November 2000, the ITUNES.co.uk domain name forwarded to CyberBritain’s music search engine service. This was three years before Apple acquired the "itunes.com" domain name from Esprit Engineering Corp.

Unknown to CyberBritain, Apple Computer Inc applied for a trademark for the name “ITUNES” on the 27th October 2000. The details of the application were strictly confidential and only known to Apple, their filing agents and HM Patent Office. It was not until the 6th December 2000, that their application was published in the Trade Marks Journal, a crucial four weeks after CyberBritain began using the ITUNES.co.uk domain name. Apple was later granted a restricted trademark on 23rd March 2001, which did not include the use of ITUNES for music products.

CyberBritain continued to use the domain to forward to its music pages throughout 2001,2002 and 2003. On 16th April 2003, Apple Computers Inc applied for a trademark for the name “ITUNES MUSIC STORE” for classes including music, they have yet to be granted the rights to the name.

Apple did not launch their ITUNES service in the UK until June 2004, almost four years after CyberBritain first registered the ITUNES.co.uk domain name.

CyberBritain, innocently registered the ITUNES.co.uk domain name and used it for four years before it was contacted by Apple Computer Inc’s solicitors in November of this year. On the 30th November, Apple issued Nominet proceedings (domain authority) to gain control of the ITUNES.co.uk domain name.

CyberBritain now forwards the ITUNES.co.uk domain name to a music promotion on its associated website, QuickQuid.com.

Benjamin Cohen, the CEO of CyberBritain Holdings Ltd said, “Apple have accused us of being cyber-squatters, something that we obviously could not be, as our registration of the ITUNES.co.uk domain name pre-dates the time that any information about their ITUNES service would have been in the public domain. In fact, they bought the itunes.com domain name three years after we purchased itunes.co.uk. They are using their status to unfairly claim an asset of an entirely innocent, British small business.”

Contacts: CyberBritain Holdings Ltd 0870 906 4555

(that is the domain owner's page)

they did do a trademark BEFORE the registration, but did not release the info till 3 weeks later.

 

[datat]

It seems to be the British/UK way of doing things, same sort of case with game.co.uk.

Big fish eat little fish. There could be many more of these to come.

 

[NexSite]

handled it totally wrong. jmoo

 

[Mr. Deleted]

Yes I agree, it is sad that he did not get to keep a name that was getting 4000 hits a day, and he had no way of knowing that they were going to use that name for a music site. I do agree however that he should not have tryed to sell to Napster, like he did, since it is a competitor, but he should be allowed to keep it.

 

[labrocca]

He shouldn't have parked it or forwarded it in that manner. If he had a logo and a page there he might have had a claim against Apple.

 

[seeker]

I use Macs all the time, and I do have a soft spot for Apple

However, from the data we have so far, I can not understand how Nominet gave this domain to Apple.
I smell a rotten apple

 

[lindmar]

I hope apple offers me 5k for itunesmusicstore.info

 

[izoot]

I hope apple offers me 5k for itunesmusicstore.info

You might get your wish...your site was indexed by google

http://www.google.com/search?q=cache:dHwsbUgHjxwJ:www.itunesmusicstore.info/+&hl=en

I don't think it will be with an offer tho..especially after winning the uk case.

 

[lindmar]

I get a lot of traffic with this site,...

I wonder if they would bother me considering they did approve me for their link affiliate program 9 months ago.
if they offered me 5g's id take it, heck id take an ipod photo and a g5

Anyone interested in helping me set-up a site here please pm me..

I dont have the chops..

 

[izoot]

I get a lot of traffic with this site,...

I wonder if they would bother me considering they did approve me for their link affiliate program 9 months ago.
if they offered me 5g's id take it, heck id take an ipod photo and a g5

Anyone interested in helping me set-up a site here please pm me..

I dont have the chops..

I guess my first statement would be is when you applied for the itunes program you did not specifically state that was the domain you would be using. My guess is that you were already using other domains and just applied for the itunes program as with the others....so Linkshare wouldn't have known of your use. You say you get lots of visitors..so I assume that Linkshare has visited...maybe. It could be they have no problem with it and I say good for you.

Point is that you oviously regged this domain for no reason other than Itunes...and use with itunes products. This in my limited legal understanding constitutes bad faith registration ... and ammo for apple should they choose to pursue it..odds are at worst you will get a c and d and you simply release the name to them. No loss for you and no reason for apple to get agressive.

my 2 ¢

btw..I'm not trying to give ya a hard time..just point a few things out.

 

[lindmar]

Hey,
First I was fully giving as I sued this domain to become an itunes affiliate. I hadto provide a description and My description was "an itunes Music Store information site where people can get daily news and updates on the itms"

I dont know.. I just really want to get a decent site up and running..

 

[Mr. Deleted]

not a bad name, but it has to be developed to more then just to sell the products... Maybe a blog or forum would help you out, as people could interact with you, and it could be concidered as you are "resonably known" by the name, rather then just directing traffic through the domain to an affilite program. So I see no problem, as long as you develop the name. Although I could be wrong with that, I have been reading WIPO rulings for a while now, and that is one of the things that come out of those rulings...

 

[Capitalwebhost]

Unfortunately, while on the surface, this looks like the big guy picking on the little guy, it's actually trademark law that's forcing the issue.

A trademark owner (and a trademark can be granted even if someone else is using the name or image, first one to register it wins..) has the legal obligation to go after anyone who infringes on the trademark.

And I'm not totally convinced this guy wasn't a squater. By his own admission, he only used it to redirect traffic to other sites and was not a real site.

Though I think Apple might have saved a few dollars and just paid the $50k for it...lol. Probably cost more in laywer fees to snag it and then have to defend it against an appeal.

And for the record, yes, I own an iPod, rarely use it and No, I don't own any other apple products or stock.

 

[Mr. Deleted]

he only redirected it for 4 days. He has a lot of these generic names that he reged, and who was to know that that was one that was going to be a big trademark? "tunes" is a generic word, and I is a common letter used to stand for internet... I see no reason to call everyone a cybersquatter, just cause their name is simular to a trademark you chose without that guy knowing it.

 

[Capitalwebhost]

he only redirected it for 4 days. He has a lot of these generic names that he reged, and who was to know that that was one that was going to be a big trademark? "tunes" is a generic word, and I is a common letter used to stand for internet... I see no reason to call everyone a cybersquatter, just cause their name is simular to a trademark you chose without that guy knowing it.

That's not my point. Everyone starts picking on the big bad company for doing what it's legally required to do. This guy was ready to sell the domain to Napster for 5k, but when Apple approached him, he shot up 10x. To me that's cybersquating in roundabout sense.

Any registered trademark owner, whether big like Apple or Microsoft, or your local mom & pop biz is legally required to take action against anyone or thing that would infringe on that trademark, whether intentional or not. Or they risk forfieting all legal rights to the trademark and it can become diluted.

Apple faces a simular issue with Apple records (you know the home of the Beatles) who they signed a trademark agreement with that allowed them to use the name Apple as long as they did not do business in the music industry. Now with iPod's they have violated that and Apple Records is going after them for that.

 

[Dave Zan]

Have some of you paid attention to this detail?

Apple Computer Inc applied for a trademark for the name “ITUNES” on the 27th October 2000

You can confirm it at the UK's trademark database.

 

[seeker]

applying for a TM and owning it are 2 different things...
Unless the person was psychic, I can not see how any court can permit that.
Of course, If they have proof that there was a leak, it is different, but still.
If someone gives me info, then get that guy, not the receiver of the info.
In either case, this is a blow to Apple, and all it stands for. Especially to loyalists like myself, who have had an apple since the late 70s

 

[Mr. Deleted]

To some extent I agree with you on it being a tm issue, but what I did not like was that they used thier power to bully him. They could jest have said, well we need it, how much you want? He only told them 50K after they lowballed him. He was not that hard up to get the money, just wanted then to ask nicer.