Apple is suing a British company who registered itunes.co.uk. (via The Digital Music Weblog)
Cohen admits that CyberBritain registered "itunes.co.uk" as a domain name in 2000, only a few days after Apple Computer Inc. itself registered "iTunes" as a trademark with Her Majesty's Patent Office. At the time, said Cohen, that filing was strictly confidential, and he couldn't have known that Apple planned to have a music service with the same name.
Cohen registered the domain as part of an expansion effort for his company in the dot-com era, but the site was never used - it just forwarded to one of his other domains.
If this case were being tried in the US, Cohen's offer to sell might get him.
Cohen says he's not anxious to go to court to retain control of itunes.co.uk -- his company would be perfectly willing to part with it, for the right price.
This was the a central issue in Virtual Works v. Volkswagen. Virtual Works registered the vw.net domain in 1996 and used it for two years as part of its ISP business. In December 1998, Virtual Works offered to sell the domain to Volkswagen after several independent Volkswagen dealers expressed an interest in purchasing the domain. They also said that it Volkswagen did not buy the domain, they would in turn sell it to the highest bidder.
The big question here is whether Cohen registered the domain in good or bad faith. Under the ACPA, courts can consider a number of factors in this bad-faith determination, including but not limited to nine enumerated factors. One of these is “the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used . . . the domain name in the bona fide offering of any goods or services.“ 15 USC 1125(d)(1)(A).
The court held that Virtual Works acted in bad faith. Despite the fact that they used it for two years for a bona fide purpose, the court relied primarily on two factors: the VW mark was well-known (and in fact played a role in the choice of domain name), and Virtual Works offered to sell the domain for gain (either to Volkswagen or to a third-party).
This case is a little different, obviously, because Cohen basically said he - and no one else - knew of the iTunes mark when he registered it. On the other hand, he never used it for a bona fide purpose, and also offered to sell it “for the right price.”
The Register also ran this story. They said the dispute falls to Nominet, and based on their interpretation of Nominet's dispute system, Apple will not win their claim for the domain. I'm not familiar with UK law and thus I don't know whether they have similar statutes to the ACPA. The Volkswagen case was tried in federal court, so it seems ICANN's Uniform Dispute Resolution Process isn't as relevant as The Register makes it out to be.