A businessman who marketed electronic cigarettes using a website address formerly owned by a leading anti-smoking charity has been stripped of the domain name after Internet watchdog Nominet ruled that his use of it had the potential to confuse the public.
Action on Smoking & Health Wales Limited, which is widely known as ASH Wales, used the domain name, ashwales.co.uk, as its home page until April 2011, when it developed a new site. Due to an oversight, it failed to renew its registration of the domain name which was subsequently bought by the businessman for £4,000.
The charity was alarmed when the businessman began using the site to market e-cigarettes – products which the charity does not endorse on the basis that they have not been proved to be either safe or effective – and complained to Nominet, the body that polices the registration of Internet domain names in the UK.
The businessman insisted that he had bought the domain name in good faith and denied that he was attempting to pass off his business as being in some way affiliated to the charity. He pointed out that there were no registered trademarks for ‘ASH Wales’ when he acquired the domain and that it was the charity’s error in allowing its registration to lapse that had given rise to the dispute.
However, a Nominet expert ruled that, in the businessman’s hands, the domain name was an ‘abusive registration’ and directed it to be handed back to the charity. He found that the charity had used the site for a considerable period and that the likelihood of public confusion was ‘readily apparent’.
Whatever the price paid for the domain, the charity’s failure to renew its registration was ‘not a licence to third parties knowingly to take advantage of the domain’s historical connection with it’. The charity had established a right in the use of the name ‘ASH Wales’ and the absence of trademark protection was not determinative.