The recent domain name dispute between online heavyweights eBay and Gumtree and the lesser-known Auto Claims Ltd, a Birmingham-based company trading as Ebuygumm, has lessons for any business which wants to protect its online brand.
Online marketplaces eBay and Gumtree complained that Auto Claims’ use of the domain name ebuygumm.co.uk, infringed their rights but their efforts ultimately proved unsuccessful. Ebuygumm was exonerated.
Let’s have a look at what went wrong for eBay and Gumtree, and what takeaways there are for you to protect your online brand.
What is a domain name?
A domain name is part of a website’s electronic address. Essentially, it is the text that follows the www. or https:// prefix (for example, “ebuygumm.co.uk”). To ensure that internet traffic is correctly directed, no two domain names are the same. Domain names often form an essential part of a business’s brand and the most desirable domain names have previously changed hands for tens of millions of pounds.
What is Nominet?
Nominet UK is the .uk domain name registry. It has jurisdiction to hear and decide complaints that are made regarding UK domain names, which is exactly what it was asked to do here.
What were eBay and Gumtree’s complaints?
Specifically, eBay and Gumtree complained that ebuygumm.co.uk was an abusive domain name, on the basis that Auto Claims:
• Had acquired it for the purpose of unfairly disrupting eBay and Gumtree’s businesses or as a blocking registration (a.k.a. cyber-squatting).
• Was using ebuygumm.co.uk in a way that had or would confuse people into thinking that the website was operated by or connected to eBay and Gumtree.
Infringing intellectual property — an issue for brand safety and security
What rights were eBay and Gumtree’s complaints based on?
Both companies own various trademarks: “eBay” is registered, in the UK and the EU, for various goods and services, including online retail services. “Gumtree” is likewise registered in the EU, for various goods and services, including online classified advertising. Both companies also own domain names, featuring the words eBay and Gumtree.
How did the dispute arise?
Ebuygumm.co.uk was registered in May 2016. It has since been used to operate a buying and selling website for UK residents, which makes it a direct competitor of eBay and Gumtree. When a website was first operated from ebuygumm.co.uk, it featured a rainbow colour logo, similar to that used by eBay. The rainbow logo was the subject of a previous dispute between the parties.
While the operators of ebuygumm.co.uk accepted that they were aware of eBay and Gumtree’s operations when “ebuygumm.co.uk” was registered, they claimed that the name was based on the Yorkshire phrase “eeh bah gum”. Gumtree and eBay disputed this, arguing that the phrase was archaic and not widely known outside Yorkshire. Instead, eBay and Gumtree argued that ebuygumm.co.uk referred to their trademarks. Both internet marketplaces also referred to the rainbow logo previously used by ebuygumm.co.uk and argued that this further demonstrated the operator’s intention to take unfair advantage of their marks.
Not only that but eBay and Gumtree, which have common ownership, also claimed that as well as being similar to eBay and Gumtree on their own, ebuygumm.co.uk was also similar to both their brands combined.
The operators of ebuygumm.co.uk rejected the combination argument entirely, stating that it had no legal basis, regardless of eBay and Gumtree’s common ownership. They further argued that eBay and Gumtree’s similarity arguments were fundamentally flawed: while ebuygumm.co.uk could conceivably be similar to one mark, it could not be similar to two entirely dissimilar marks (i.e. to both eBay and Gumtree).
What did the expert decide?
In his October decision, Nominet expert Michael Silverleaf QC:
• Rejected eBay and Gumtree’s combination argument. There was no evidence that the public was generally aware of eBay and Gumtree’s common ownership. Even if this was the case, the eBay and Gumtree marks were not used together and so to compare them in this manner would be artificial.
• Concluded that the phrase “eeh bah gum” was well-known to him and that eBay and Gumtree had produced no evidence to show that the phrase was obscure. The expert therefore concluded that it was quite likely that the phrase would be recognised by a significant proportion of the UK public and that a link would be drawn between the phrase and ebuygumm.co.uk.
• Noted that it was a common principle of trademark law that consumers perceive marks as a whole and do not analyse their individual elements. As such, it was only right to compare “ebuygumm.co.uk” with eBay and Gumtree in full, rather than only comparing some of the arguably similar elements. This resulted in a finding of only a low degree of similarity with eBay and a lower still similarity with Gumtree.
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What can brand owners learn from this decision?
#1 – Pick your battles carefully
In this case, the expert’s view was that eBay and Gumtree had “cast their net too widely”. While the desire to protect a brand is understandable, owners should stop to consider whether the offending activity poses a genuine threat to their brand. This is an especially important consideration for owners with limited brand protection budgets.
#2 – Logo marks can be less useful in domain name disputes
Similarity is assessed visually, aurally and conceptually. It is therefore important to protect logos as they appear, as well as in their plain text form (e.g. “EBAY”). By doing so, your mark should be inherently more similar to offending domain names as plain text will be compared with plain text.
#3 – Stay vigilant
The case highlights the importance of having watching services monitor words, logos and domain names which may conflict with your brand. The operators of ebuygumm.co.uk had registered a logo similar to eBay’s well-known rainbow logo in May 2017 but eBay did not oppose the application. Had it done so, eBay’s negotiation position may have been stronger as ebuygumm.co.uk would have been in its relative infancy and its owners may therefore have been less wedded to the brand, both as a concept and financially.
