Small Businessman Beats BMW in Internet Domain Names Dispute

Posted: 18th December 2015

Everyone is equal in the eyes of the law, regardless of size or economic muscle. In one case which underlined that principle, a small businessman came out on top in a dispute with giant car manufacturer, BMW, in respect of his registration of eight internet domain names.

BMW had invested heavily in a range of 'eDrive' hybrid vehicles which were sold in the UK and across Europe. The company complained to internet watchdog, Nominet, after the businessman registered the domain names, all of which contained the word 'edrive'.

BMW argued that the businessman was seeking to take a ‘free ride’ on its worldwide reputation and that any use he made of the domain names was likely to confuse the public and unfairly disrupt its business. In support of its complaint, the company pointed out that the businessman had offered to sell it the domain names for what it argued was an excessive sum of up to £2 million.

For his part, however, the businessman argued that the letter 'e' is a commonly used suffix, giving 'e-commerce', 'e-book' and 'e-mail' as examples. The domain names had not been used in any way which could cause public confusion and had been registered in good faith. He could see nothing wrong with offering to sell them and had expected BMW to make a counter-offer.

Ruling in his favour, a Nominet expert found that there was nothing inherently wrong with buying domain names with a view to selling them on. Although he had been less than transparent about what he intended to do with the domain names in the future, the expert was not convinced that he knew of BMW’s rights in the ‘eDrive’ mark at the time of registration or that he had set out to take unfair advantage of the company’s goodwill. The expert rejected claims that the registrations were abusive and refused to direct the transfer of the domain names to BMW.

Bayerische Motoren Werke Aktiengesellschaft v Russel & Anr. Case Number: D00016525