By Jo Best, 27 May 2005 17:15
NEWS The authority of the UK's domain name registrar has been called into question after the owner of the domain name iTunes.co.uk investigated what rights the registrar had to make him hand the URL to Apple.
Benjamin Cohen, who registered the iTunes.co.uk address three years before Apple launched its popular music store, was ordered to transfer rights to the URL to Apple by .uk registrar Nominet in March.
Nominet, Cohen contends, has no authority to make him transfer iTunes.co.uk - and he has a statement from the Department of Trade and Industry to prove it.
Cohen filed a Freedom of Information Request with the DTI regarding what Nominet's legal or official authority was to force him to transfer the rights to Apple. The DTI responded "we are not aware of any statutory recognition of Nominet".
Despite Nominet's claim on its website that it is "officially recognised as the .uk domain name registry by the internet industry, users and the UK government", the DTI said it does not officially recognise Nominet as the sole registrar of .uk domain names.
The DTI also told Cohen that the viewing of URLs as intellectual property is somewhat of a moveable feast and domain names are not necessarily subject to the same rights and restrictions as intellectual property.
"A domain name is a written representation of an internet electronic address and as such, like any other form of address e.g. a postal address, it should not be treated as intellectual property per se," it said but added various protective measures were in place to prevent abuses of intellectual property.
The DTI's response has thrown Cohen's legal challenge into limbo. Given that Nominet is not a public body, the iTunes.co.uk owner can't appeal the decision at the High Court as he intended. Cohen is, however, mounting a legal challenge, he said.
Comments
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1. anonymous
Since he had the name 3 years before apple.
He should sue apple.
First come first serve.
2. Derek Clarke
Whatever the legal ins and outs, Apple seem to have control of itunes.co.uk - just try going to it!
3. John Buttress
Good luck to Cohen. If Apple so desparately wanted the ITunes domain they should have offered to buy it from Cohen or choose a different name. Just because they are a huge company that can afford expensive lawyers, doesn't mean they can throw their weight around and bully those for something they want but someone else has.
4. anonymous
If Benjamin Cohen registered the name 3 years before Apple launched iTunes surely he has more right to the name then Apple. It's another case of corporate bullying again.
5. anonymous
Perhaps Cohen should sue Apple for stealing his trade name in the first place? Good luck to him hope the American bully-boys get their come uppance! The best we can do is to refuse to buy their products and buy cheaper taiwanese products that do the same job (pun intended!).
6. Craig
Isn't this more to do with trade marks than web addresses? If Mr Cohen had registered iTunes as a trade mark three years before Apple then they wouldn't have had a leg to stand on. Because he only registered the URL, then later Apple registered the trade mark, the letter of the 'cybersquatting' law favours Apple, but it's spirit, and indeed common sense, favours Mr Cohen.
7. anonymous
I'd read that Apple offered Cohen £5k but he's holding out for £50k. As he only re-directs the site to a completely different service, nothing to do with iTunes, it seems like he's trying it on. But the bigger picture is that we need better regulation for the naming authority so this doesn't happen again.
8. Jez Reichmann
I think the issue is more fundemental, Nominet should be working with business and individuals to ensure that domain names cannot just be purchased by anyone. If Cohen has a legitimate use of the name for a product or business associated with that name, then he should be entitled to keep it and use it. However to store the address and not use it, should be prohibited, and Nominet should employ process to ensure people are using domain names for the purpose for which they are intended. Let Nominet earn their money!
9. Simon
Could Cohen apply to prosecute Nominet & Apple for theft ?
10. Simon Mallett
Good luck Mr Cohen. Apple should have done their homework as to what was available rather than relying on bully boy techniques. If Apple get away with this it effectively means that any large or wealthy body can take whatever domain name they fancy!
11. Guy Harris
The decision to make Cohen to hand over the domain sets a worrying precedent. This could mean that any company could lodge a request at any time in the future for any domain already in use by another company. This is clearly wrong. Apple should have been aware at the time of choosing i-tunes that it was already registered. Unless they can reach a commecially agreeable arrangement there is no reason for the domain to be passed to Apple or any other party - This breach of common sense
12. Jon
Sure, he had it three years before, but was he doing anything with it? They should've bought it from him if the name was in use, with a relevant website hosting some form of 'tune' based service...
Otherwise, he's just another squatter, and they did the right thing.
Does anyone know what he used it for?
13. anonymous
As Mr Cohen has had the domain name for a number of years surely Apple are doing the cybersquatting?
No comments from the rabid Apple faithful yet...
14. anonymous
Apple probably have no right to it anyway - from memory wasn't Apple only allowed to use the name "Apple" as long as it kept away from the music business in an agreement it made with the Beatles record company sometime in the early nineties?
15. Stuart Millard
If Apple are so up in arms about this "infringment" of their i-name system, why aren't they suing Will Smith for a similar thing in the film "I-Robot"? Or how about suing Paramount for the episode of Star Trek TNG called "I, Borg"?
16. anonymous
Bullying by Apple is not new if the story I heard is true. Years ago their lawyers sent a nasty letter to a business in the suburbs of Sydney demanding it change its name from "The Apple Store" because they had not authorised it. The store was a greengrocers owned by a Joe Apple.
17. anonymous
You might want to read
http://caselaw.lp.findlaw.com/data2/circs/9th/0115899p.pdf
18. Simon Bazley
Just playing devils advocate here, but I understand trademark law says you have to defend your trademark or you lose it, so apple have to bully everyone (thats why there is a group setup to fight about the linux trademark).
As for the domain name, I understand nominet have a clear set of defending principles which mean you can keep your domain name (including legitimacy of the trademark or complaining about the same trademark). Offering to sell a domain is an instant breech and means you loose it. So if this chap really did ask for 50k thats all nominet need to take it away. What he should have done is make an anti itunes site slating them and tell them he was not prepared to sell for what they were offering.
Some chap mentioned that this was theft, well nominet make clear you don't own domain names, you don't even rent them, so you have no property rights so can't steal them.
And finally the statement, 'big companies with expensive legal teams can't go bullying people'. Dream on, in this world they can. They shouldn't but they can and they do.
19. anonymous
This story has run before...
Only, last time I saw it I'm sure it said Cohen registered the domain only a couple of months before Apple registered the "iTunes" trade mark.
There are two issues here:
Firstly, big companies with fat lawyers will always bully one-man-bands (and be allowed to) - it's morally wrong, but judges have no morals - they used to be lawyers themselves. In this case, however, I think Apple are right to persue it.
Secondly, and this has yet to be answered, is how Cohen found out that Apple were considering the name "iTunes" - you couldn't guess at a name like that, so he must have had inside knowledge and is trying it on.
What is needed to resolve this is a simple change to the law, so that a domain name becomes part-and-parcel of a trade mark, and becomes yours when you register the trade mark. You can't use someone else's trade mark by changing the font or colour of the letters; likewise you shouldn't be able to use it just by adding wwww. to the front or .co.uk or .com (or whatever) to the back of it...
20. Edward Phillips
Much of the comment in relation to this article is about whether or not the decision was "right" or not. I would encourage people to read the decision itself because the Expert in the case explains in detail why she reached the decision she did: find it at
http://www.nominet.org.uk/DisputeResolution/Decisions/Drs02223Itunes.html
Nominet has also explained its position in relation to Mr Cohen in a statement, available from:
http://www.nominet.org.uk/News/PressReleases/2005PressReleases/ItunesDrsDecisionStatement.html
21. Michael
In response to the person who said, "Since he had the name 3 years before Apple. He should sue Apple" ... The story says he registered the domain "three years before Apple launched its popular music store." It should be noted that the _music store_ was integrated into iTunes with version 3. The iTunes app has been around a LOT longer than the music store.
22. Anonymous Too
Several people here have said he registered the name 3 years before iTunes but that isn't true. He originally registered in Nov 2000 and iTunes was first launched in Jan 2001.
So he still wins but only by a couple of months. So my question is, did he have some inside knowledge of the iTunes name before the launch? I can't remember if the name leaked early or not but if he knowledge of the name, then I don't think he has a case. If it was just coincidence then he does.
23. Martin Hill
Cohen is a Cybersquatter - this is hard to dispute. Apple released it's original iTunes software only 3 months after Cohen applied for the itunes domain.
Apple already had plenty of products with the "i" in front and considering the rumour mill and press around Apple, can anyone honestly say Cohen wouldn't have had a pretty good idea the up-coming Apple product was going to be called iTunes?
If nothing else, he was capitalising on Apple's "i" naming scheme and would know the chances were good that Apple would use that name sometime, for something.
As it is he has used the domain for nothing at all to do with music - it pointed to a dodgy scam site before Apple took it back.
Even with this, Apple did offer a reasonable amount of money to purchase it from Cohen who refused - he instead wanted to milk Apple for as much as he could get.
I'm afraid this is not a case of a corporate giant treading on the little guy, but rather a cynical cybersquatter squealing when the appropriate authorities saw through his sham.
-Mart
24. Martin Hill
Cohen is a Cybersquatter - this is hard to dispute. Apple released it's original iTunes software only 3 months after Cohen applied for the itunes domain. Apple already had plenty of products with the "i" in front and considering the rumour mill and press around Apple, can anyone honestly say Cohen wouldn't have had a pretty good idea the up-coming Apple product was going to be called iTunes?
If nothing else, he was capitalising on Apple's "i" naming scheme and would know the chances were good that Apple would use that name sometime, for something.
As it is he has used the domain for nothing at all to do with music - it pointed to a dodgy scam site before Apple took it back.
Even with this, Apple did offer a reasonable amount of money to purchase it from Cohen who refused - he instead wanted to milk Apple for as much as he could get.
I'm afraid this is not a case of a corporate giant treading on the little guy, but rather a cynical cybersquatter squealing when the appropriate authorities saw through his sham.
-Mart
25. anonymous
There was no indication that Apple were going to launch ITUNES at the time the domain was registered. Why didn't they register it? Why did they only buy the dot.com from an unrelated software company in 2000?
Also that's not the reason that cohen is disputing this, he's disputing the process that Nominet went through. The fact that Apple got to make 2 submissions and not 1 and that he couldn't respond to some untrue allegations made by Apple.
26. anonymous
Why is this referred to as a cybersquatting case... squatters exploit unused addresses but Mr Cohen clearly did not do that and your references to him as a cybersquatter demonise his innocent actions.
Now if he had somehow co-opted or tricked his way to exploiting an unused URL for his own purposes then he would be a cybersquatter.
Your editorial is therefore prejudiced in my opinion. Maybe he is a cyberspeculator instead.