Roxio Inc -v- Treasury Solicitor [2004] DRS 1380 (12 January 2004)

Roxio Inc -v- Treasury Solicitor [2004] DRS 1380 (12 January 2004)

The complainant established rights in the 'Napster' mark and the domain name was identical. The respondent, by its conduct, evinced intention to take possession of the domain name, making it 'in the hands of the respondent.' The respondent's threatened auction of the domain name, where only the complainant could lawfully use it, was abusive. The domain name was therefore an abusive registration in the hands of the respondent and should be transferred to the complainant.

Citation
[2004] DRS 1380
Parties
Complainant: Roxio, Inc; Respondent: The Treasury Solicitor
Jurisdiction
United Kingdom
Judgment Date
12 January 2004
Procedural Posture
Domain Name Dispute / Decision of Independent Expert Under Nominet UK Dispute Resolution Service
Outcome
Domain name to be transferred to the complainant.
Legal Topics
Domain Names, Trade Marks, Bona Vacantia, Abusive Registration
Intellectual Property Information Technology Domain Names Trade Marks Bona Vacantia Abusive Registration

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Parties

Roxio, Inc

Complainant

The Treasury Solicitor

Respondent

Procedural Posture

Domain Name Dispute / Decision of Independent Expert Under Nominet UK Dispute Resolution Service

Legal Issues

  1. 1 Whether the complainant has rights in the name or mark 'Napster' identical or similar to the domain name napster.co.uk
  2. 2 Whether the domain name napster.co.uk, in the hands of the respondent, is an abusive registration

Ratio Decidendi

The complainant established rights in the 'Napster' mark and the domain name was identical. The respondent, by its conduct, evinced intention to take possession of the domain name, making it 'in the hands of the respondent.' The respondent's threatened auction of the domain name, where only the complainant could lawfully use it, was abusive. The domain name was therefore an abusive registration in the hands of the respondent and should be transferred to the complainant.

Court Disposition

Domain name to be transferred to the complainant.

Orders

  • The domain name napster.co.uk is to be transferred to Roxio, Inc.