Apple Threatens iTunes.co.uk Owner

derxob writes "According to The Register, Apple has accused Benjamin Cohen, the 'dotcom millionare' of being a 'cybersquatter.' He registered ITunes.co.uk on Nov. 7 2000, and Apple trademarked ITunes on Dec. 8, 2000. They have taken him to the UK registry Nominet and are demanding that he give up the domain."

Not a squatter

[Anonymous Coward]

RTFA, he registered it before Apple even thought about creating iTunes and he did use it to redirect to his search engine.

Re:So which is worse?

[Palal]

Apple had a similar problem with the 'iMac' trademark. Seems they need to get their act together and start registerring their trademarks before they release the product. But this doesn't even compare to Microsoft's hicup of forgetting to register hotmail.co.uk !!!

Does anyone remember...

[Anonymous Coward]

... Mikerowesoft.com? (Was that it? Or did it have hyphens?)

Re:Go Steve

[Freexe]

nominet doesn't allow you to cybersquat and then sell your domain for money.

Re:So which is worse?

[Anonymous Coward]

It isn't the first time Microsoft forgot to renew a domain [techdirt.com].

Re:Who had an iTunes domain first? (Doesn't matter

[phreakv6]

If the date is after November 7, 2000, then yeah, he'd obviously have had to be psychic.

whois database shows that it was
Registered on: 07-Nov-2000
and not after Nov 7.. so guess he is not psychic :)

Filing / First Use Date is What Really Counts

[Ron Bennett]

Filing / First Use Date is What Really Counts ...

The UK Patent Office - Trade marks - Database
http://www.patent.gov.uk/tm/dbase/index. htm

Filed Oct-24-2000 ... that's before Nov-07-2000 - and according to the UK Patent Office website, the database updates weekly; perhaps it didn't back then, but my guess is he knew about Apple's intended use and/or pending TM application(s).

http://webdb4.patent.gov.uk/tm/number?detailsreq ue sted=C&trademark=2249936

Being that he's a millionaire, Apple's TM claims appear weak (my layman's opinion based upon my own experiences in domain name speculation), and he is determined to fight, Apple may eventually choose to settle for some decent size amount ... 6-figure sum USD/GBP wouldn't surprise me.

Ron Bennett

Re:Dig deeper

[dustinbarbour]

Wait wait wait.. Where do you see him selling a program "for Apple's iTunes"? I find "Apple" on the page only once and that is within this sentence: "Join today and not only get £5 free, but also a chance to win an Apple iPod with £50 worth of iTunes for free." Certainly giving away free iPods isn't a crime. So where is his infraction? On top of that, if he domain truly weas registered back in 2000 as a previous poster noted, I'd say Apple was screwed and that, if Apple wanted the domain, they should make him an offer he can't refuse. He can't be making any sort of income from that website. I mean, come on.. I've seen better work done with Frontpage!

Re:Go Steve

[bsartist]

Well, come on, this guy knew Apple was going to register it.

Not unless he had inside information, or a crystal ball. iTunes 1.0 wasn't released until Jan 2001 - more than a year after he registered his domain.

Re:Filing / First Use Date is What Really Counts

[The Dodger]

He's not a millionaire.

When he was a teenager, he (with assistance from his daddy) set up a Jewish community website. This was at the height of the Internet bubble. It was speculated that the website would be worth millions and, hence, that young Cohen was a millionaire. He was a media darling for a while - lots of newspaper articles and I think there was a TV program...

I was part of the dot-com scene back then and some of the stuff we were doing was related to communities and content management, so this guy came across our radar screen as a potential client, but the general view amongst serious players (i.e. those who were actually building a real business model, instead of just setting up a website with a catchy name) was that Cohen was basically a rich kid, his daddy was the real business brains behind it all and that, both the company (TotallyJewish or something like that) and Cohen Jr.'s talent, skills, abilities, value, intelligence, business sense (in fact just about everything apart from his father's PR skills at getting his son exposure in the media) were vastly overrated.

The website/company in question was eventually sold for a paper value (i.e. it was a takeover and he got shares in the company that was doing the taking over) for well, well under £1m...

D.

Re:He should try to get their trademark signed ove

[Anonymous Coward]

iTunes.co.uk was registred in 1998, a long time before itunes.co.uk. It is however not clear whether it was owned by Apple before october 2000.

That sentence doesn't make sense. The DNS system isn't case sensitive. You must mean itunes.com was registered in 1998.

Re:Dig deeper

[goatan]

If the domain were used for something completely unrelated to Apple's program, I think Apple would be unreasonable for attacking the registration.

Apple are unreasonable because he registered it before apple even trademarked itunes if they hadn't have been so secret about they would have a leg to stand but they don't.

However, the domain is instead being used to undermine Apple's specific trademark and as such is, I think, arguably fair game.

it was originally a music search engine long before Apple's itunes existed, in what way does it undermine apples trademark (bear in mind the website was registered before the trade mark). If you had dug a little deeper and read the accompanying text

CyberBritain, innocently registered the ITUNES.co.uk domain name and used it for four years before it was contacted by Apple Computer Inc's solicitors in November of this year. On the 30th November, Apple issued Nominet proceedings (domain authority) to gain control of the ITUNES.co.uk domain name.

CyberBritain now forwards the ITUNES.co.uk domain name to a music promotion on its associated website, QuickQuid.com. you would have realised that they have taken down the music search site because of apples actions and pointed it to quick quid which happens to contain an advert for itunes amongst others (not the best move) but the original website was fair use and he should have been left as it was rather than being taken down in a panic.

I hope Mr Cohen takes apple to court they are trying to turn into MS MK2, it's First come first served Mr Cohen was first and he would probably win if this went to a court of law.

Squatting

[ajs318]

The definition of squatting {in the traditional sense} is occupying a place that someone else has vacated. Under English law, the lions share of the rights associated with land and buildings belong with the occupier, as distinct from the owner -- a throwback to feudal times no doubt, but a valid protection measure against excesses of authority by absentee landlords. "An Englishman's Home is his Castle" -- and it's your home if you live there, regardless who owns the building or the land on which it stands. {As an aside, when I was buying my house, things were moving a bit slowly and I was technically homeless for one night. I spent that night in my new place. Legally, I was a squatter; but the only person in the world who could have got myself evicted without a court order, was me!}

The practice of "cybersquatting" originally referred to re-registering expired domain names which used to have belonged to businesses, and linking them to sites with which the former registrant probably would not wish to be associated, in the hope that the former registrant will pay you not to do it {as opposed to just launching a DoS against your new host}.

Cohen registered the itunes.co.uk site before Apple even trademarked "iTunes" in the UK; so it's arguable that Apple are in the wrong ..... Cohen could even possibly have their trademark invalidated! However, if I were Cohen, and the judge ruled in my favour and against Apple, I'd settle for a printout of the iTunes source code ..... with this document [opensource.org] stapled to it .....

PS. I visited the itunes.co.uk [itunes.co.uk] site and it has an intrusive registration with a drop-down box for "gender" -- but only gives the options "male" and "female". Where's "other" when you need it?!

Re:Go Steve

[Nexum]

...and the fact that the registration for this site preceded macs trademarking of itunes...

Jesus, when will people get a clue and stop making this mistake? Mac is a product name Apple is the company.

apple.co.uk

[bobbagum]

Apple.co.uk isn't the Mac company either,

Re:He should try to get their trademark signed ove

[SegFaultCM]

How do you get that it was registered in 1998? The WHOIS shows 11/7/00.

Re:He should try to get their trademark signed ove

[julesh]

This is not clear and should be something for the lawyers.

The interesting thing about Nominet's dispute resolution system is that there will be no lawyers involved (unless one of the parties chooses to use a lawyer as their representative). It's an informal sit around the table and work out the problems system, decided based more on the merits of the facts as presented than on arcane rules and regulation. You can't just win by sending in a good lawyer.

Thus Findlay Steele Associates [fsa.co.uk] got to keep their domain (worth seeing the disclaimer they've got on the front page!), and I see little reason Mr Cohen shouldn't keep it.

Incidentally, is this the sex.com guy? The name sounds familiar.

Re:Blatant British Slant

[Dusabre]

Apple filed for the trademark on 24 October 2000. This is before he filed for the domain - Nov. 7 2000.

http://webdb4.patent.gov.uk/tm/number?detailsreq ue sted=C&trademark=2249936

A trademark is registered as of the date of filing under 40 (3) of the UK Trademark Act.

http://www.patent.gov.uk/tm/legal/tmact94.pdf

Therefore from 24 October 2000 - only Apple can use the trademark in business. Date of publication is not relevant.

The legal situation is different from that given by the slanted Register article.

Re:So which is worse?

[buttersnout]

Actually, no, they did register the underlying trademark. According to silicon.com they registered it in october. This guy got his domain in november. Then apples trademark was made public in december.

Re:How to get out of it...

[zuzzabuzz]

a play on "hotmail." I didn't get it either until you said you didn't. thanks.

Re:Blatant British Slant

[goatan]

You're wrong. If it can be proven that Apple registered the trademark before Cohen registered the domain, then it is an open and shut case of cybersquatting, and the domain must be surrendered to Apple.

Sorry to piss on your parade but the offical FAQ [patent.gov.uk] says you are wrong.

If I have a registered trade mark, does that automatically entitle me to use that mark as my domain name?

Not necessarily. Because the same mark may be registered by different proprietors for different goods or services, someone else may also have legitimately registered the mark as their domain name

What can I do if someone has registered a domain name which I think should belong to me?

We suggest you take appropriately qualified legal advice. There are dispute resolution procedures operated, for example, by the World Intellectual Property Organization (WIPO) . And if you have a registered trade mark you may have legal remedies against someone who has registered the domain name simply for the purpose of profiting by its sale to the rightful trade mark owner.

Ben says he doesn't want to sell if that stays as it is. There is not much Apple can do and judging by the reaction they are getting (in the news) they are damaging there reputation in the UK.

Re:So which is worse?

[Too Much Noise]

You have to remember that this was early 2000 also, everything was still e-this and i-that, it is very possible that this guy came up with the name independent of any knowledge of Apple's music service.

RTFA - there was no Apple music service at the time.

As a press release put out by Cohen makes clear,

he registered the domain "itunes.co.uk" on 7 November 2000, and two days later made use of it by forwarding it to a music search engine service at his CyberBritain site.

Apple, on the other hand, only had trademark for "iTunes" published in the Trade Marks Journal on 6 December 2000. It was granted a limited trademark that did not cover music products on 23 March 2001, and eventually went live with its iTunes offering in June this year - four years after Ben Cohen first registered iTunes.co.uk.

Re:So which is worse?

[Binky The Oracle]

Note that was the date on which the trademark was published - what, if anything, does that say about the date on which it was applied for? How much red tape is involved between application for and approval and/or publication of a trademark?

(I just re-read the parent and the author was asking about the UK process for trademark. My post below covers my experience in getting a US trademark registered.

My trademark took from September of 1998 until July of 2000 to get processed. I think a lot of people here are under the assumption that registering a trademark is as simple a procedure as registering a copyright or filing a DBA at the local county annex. It isn't.

First, you have to get a lawyer. Preferably one that specializes in trademarks. Well, you don't have to, but it's worth the money - kind of like you can write a word processing program from scratch, but it's probably not worth the time or money to do so.

Second, you have to have a search run (there are companies that exist solely to do this) to ensure that your proposed trade or service mark won't infringe on an existing one.

In my case, I was using a made-up word and I still ended up with a report that broke 500 pages. Luckily, none of them was deemed close enough to pose a significant problem and I could move on to the next phase: registration.

You have to choose the categories (as published by the patent and trademark office) in which you plan on using your mark. Examples would be: creation, publication, and distribution of software. A musical performing act. Manufacturing of entertainment products for retail sale. Please note that I'm just making these up and they probably aren't even close. That's why I hired the trademark attorney.

Once the registration is submitted, you sit and wait. If the trademark office has an objection, wants clarification, or anything else, there will be a delay while you work that out. You have six months to rectify that situation.

After the trademark office has accepted your application, there's a period (I think it's 30 days) where the mark is announced and any other mark holders can register a complaint about your proposed mark.

If nobody complains, you have your new trade or service mark. If someone complains, that's a whole different set of problems.

So for my relatively simple application, using a trademark attorney, with one kickback from the office to make minor changes to my category classifications, and no objections from other trademark holders, it took over 18 months to get the mark (and about $1500 in legal, search, and application fees).

I imagine that companies with large legal teams dedicated to these things might get things pushed through a little faster, but the process is still a long one.

Pay Attention to Trademark Filing :: see below

[tyrione]

The trademark for iTunes

Word Mark
ITUNES

Goods and Services
IC 009. US 021 023 026 036 038. G & S: Computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing audio data. FIRST USE: 20010109. FIRST USE IN COMMERCE: 20010109

Mark Drawing Code
(1) TYPED DRAWING

Serial Number
76193469

Filing Date
January 9, 2001

Current Filing Basis
1A

Original Filing Basis
1A;44D

Published for Opposition
September 3, 2002

Registration Number
2653465

Registration Date
November 26, 2002

Owner
(REGISTRANT) Apple Computer, Inc. CORPORATION
CALIFORNIA 1 Infinite Loop Cupertino CALIFORNIA
95014

Attorney of Record
John C. Baum

Priority Date
October 24, 2000

Type of Mark
TRADEMARK

Register
PRINCIPAL-2(F)

Live/Dead Indicator
LIVE

Re:He should try to get their trademark signed ove

[idsofmarch]

Apple went after eMachines not because of the 'e' but because of the shape which was clearly copied from Apple's design: eMachines was trying to ride on their coattails. This case is an entirely different thing altogether, and I have to admit that this guy owns the domain, although he should put up a redirect for people looking for iTunes in the UK. I agree about Webster's, they should claim prior art on Word.

Re:Who had an iTunes domain first? (Doesn't matter

[Marc Slemko]

Not that it is really relevant, but...

itunes.com was owned by "Esprit Engineering Corp." until around 2003-10-13, at which time it became owned by Apple.

Whois history courtesy of http://whois.sc/

Re:So which is worse?

[podperson]

"I'd think Apple would want to stay far far away from Trademark and name disputes wrt the music biz - doesn't Apple Records still have lawsuits going because Apple Computers violated their agreement to stay out of the music biz with that name?"

Apple Records doesn't sell musical instruments, non-linear editors, or MIDI devices. When Apple (Computer) first got into a dispute with Apple (Music) the line in the sand was "music" as though anything remotely musical was part of Apple (Music)'s business. Only when Apple became, in effect, a music publisher, did it infringe Apple (Music)'s domain in any real sense. Before this happened Apple was sued multiple times for things as insane as having musical system beeps. In general, it seems to me that Apple has acted in good faith -- it did not set out to infringe on Apple (Music) from the start, things just evolved this way.

If I start a company today and give it a reasonable, original name, and 25 years later it's huge and infringes on some basically dysfunctional company which tries to sue me over it, this is hardly an indictment of my ethics.

On the other hand, someone who tries to guess what a valuable domain name is going to be (having heard that Apple is likely to enter the music business) for no other reason than to act as a parasite (either by getting "clicks" from people guessing URLs or by selling the domain name at an inflated price) cannot be construed as having acted in good faith.