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Supermarket Chain Secures Transfer of 'Abusive' Domain Name

If a business objects to the registration of a UK domain name by someone else, it can seek to have the domain name transferred to itself through Nominet UK's Dispute Resolution Service (DRS). A major supermarket chain recently succeeded in securing the transfer of a domain name consisting of the name of a leading UK digital retailer it owns, followed by 'bookofdreams', the name of a catalogue published by the retailer for many years.

The retailer's website was the third most visited UK retail website in 2022. More than 70 per cent of its sales in that year originated online. Its Book of Dreams catalogue was published in paper form from 1972 to 2020. The company that had registered the domain name subsequently offered to sell it.

The supermarket chain made a complaint under the DRS, seeking transfer of the domain name. To succeed in its complaint, it needed to show that it had rights in respect of a name or mark identical or similar to the domain name, and that the domain name was an abusive registration in the hands of the company that had registered it.

The Nominet expert noted that the retailer's name, which formed the first part of the domain name, was a trade mark registered in various jurisdictions. The Book of Dreams catalogue had been published for nearly 50 years and, when publication ceased, this was widely reported on. The expert concluded that the retailer had rights in a mark identical or similar to the domain name.

The expert accepted that there was no association between the supermarket chain and the company that had registered the domain name. An internet user visiting the website linked to the domain name would assume that it related to the retailer's goods and services and would be confused into believing that it was owned by the retailer. The company had not provided any reasonable justification for registering the domain name. Accordingly, the registration was abusive. The expert directed that the domain name be transferred to the supermarket chain.

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