A British domain name reseller has won an appeal against an American multinational that tried to have it stripped of a parked domain, having rebuffed an offer to sell the disputed moniker for up to £20,000.
In a rare appeal case, Nominet's Dispute Resolution Service upheld its earlier verdict and allowed Successful Internet Ltd to keep hold of the forte.co.uk and forte.uk domains, in spite of the Illinois Tool Works Inc (ITW)'s attempt to forcibly take control of them.
The dispute broke out in March 2017 when ITW sent Successful a "cease and desist" letter complaining about forte.co.uk. ITW had bought out a British business called Forte Lubricants in 2008 and therefore gained control of all of Forte's trademarks and IP.
ITW "also says that although the relevant parking pages linked to pages which suggested the Domain Names were for sale at £1,000 the Respondent in fact demanded a much higher sum (£15,000-£20,000) for the sale of forte.co.uk," said Nominet's published decision notice.
For its part, Successful "concedes the domain names are identical to that trademark", according to Nominet, which added that in the British reseller's view "this is not surprising as 'forte' itself is a dictionary word with a generic meaning and unlikely to be capable of registration as a word mark on its own".
It appeared that ITW initially complained to Successful about adverts on forte.co.uk's holding page in March 2017, which Successful tweaked by August. The forte.co.uk domain was first registered in 2004 "in an automated fashion... simply because it became available".
Although ITW whined that forte.co.uk was advertised as being for sale at £1,000 and said Successful then offered to sell it for £15,000-£20,000, Nominet ruled that this "was not any kind of demand, but simply to inform the complainant of the asking price". It was said that Successful put a generic ad on all of its domains for sale, listing prices as starting at £1,000.
"The Respondent says it provided the standard quotation to the Complainant at this stage without any real expectation of appropriate further interest from them given the nature of its earlier correspondence and apparently firm lower offer," noted Nominet, which also dismissed ITW's complaint that Successful went on to register forte.uk after the complaints about the .co.uk domain had been received.
ITW's complaint that the registrations of forte.co.uk and forte.uk were abusive were both thrown out by the Dispute Resolution Service's three-strong appeal panel of Nick Gardner, Ian Lowe and Claire Milne. ®