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Small Businessman Beats BMW in Internet Domain Names Dispute

PLEASE NOTE: Information in this article is correct at the time of publication, please contact DFA Law for current advice on older articles.

In the area of intellectual property (IP) law, the small firm has every chance of defeating the megacorporation, especially as regards ownership of domain names.  

In one case, which underlined the potential costs of failing to register Internet domain names appropriate to your business or products, a small businessman came out on top in a dispute with giant car manufacturer BMW in respect of his registration of eight domain names. 

BMW had invested heavily in a range of ‘eDrive’ hybrid vehicles that 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 prefix, giving ‘e-commerce’, ‘e-book’, ‘e-business’ and ‘e-mail’ as examples. The domain names had not been used in any way that could cause public confusion and had been registered in good faith. He could see nothing wrong with offering to sell the domain names to BMW and had expected them 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 the businessman 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.

Says Clare Towers, “This case illustrates the importance of securing appropriate domain names before an expensive branding exercise is launched. We can advise you on all aspects of IP protection and ensure that the value of a brand investment you intend to make is not compromised by lack of ownership of all the appropriate domains and other IP, such as trade marks.”


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