Meerkat loses porn website dispute
The owner of price-comparison website 'Compare The Market' has become the first business to lose a dispute over a .xxx domain name (covering adult content) that matches one of its brands.
BGL, which markets comparethemarket.com using a Russian meerkat character called Aleksandr, filed a complaint over comparethemarket.xxx at the Czech Arbitration Court.
The complaint falls under the Uniform Domain-Name Dispute-Resolution Policy (UDRP), which is used to resolve clashes between trademark owners and website registrants.
The UDRP requires complainants to satisfy three criteria to secure a transfer of a website: the domain name is identical or confusingly similar to its trademark; the registrant has no rights to, or legitimate interests in, the domain; and the domain was registered and used in bad faith.
Since December 2011, when the adult domains went on general sale, brand owners have won every dispute over .xxx domains. Some complainants have also used the Rapid Evaluation Service, a faster mechanism that is designed exclusively for .xxx clashes. All complainants using this policy have succeeded.
But the Czech Arbitration Court, one of four global UDRP service providers, ruled against BGL on May 15, 2012. The court said the company failed to satisfy the third element of the policy: bad faith.
It said BGL failed to show that the registrant had tried to sell the domain back to it; had registered other infringing domains; or had tried to profit from the domain—all behaviour indicating bad faith.
According to the court, BGL claimed the website was completely inactive—which, if proven, is usually sufficient to prove bad faith. But the panellist Mike Rodenbaugh said this was not necessarily the case. “Clearly, ‘compare the market’ could relate to myriad different types of markets and myriad different comparisons within each one, as demonstrated by a simple web search,” he said.
However, BGL would be able to file a second complaint over the website if it could show that the facts of the case had altered. A change in the use of the domain would be sufficient for this.
