A man who claimed to have registered the domain name ‘sidleylawyers.co.uk’ on behalf of a friend called Sidley who was about to qualify has been ordered to hand it over to US giant Sidley Austin.
The dispute resolution service of Nominet, the registry for .uk domain names, ruled that the firm was the victim of an “abusive registration”.
Anil Mannick from Surrey was found to have offered to sell the .co.uk and .com domain names to the firm for $3,000.
Sidley Austin holds the US and EU trade mark registrations for the words ‘Sidley’ and ‘Sidley Austin’, dating back to 2006.
The law firm argued that the name ‘sidleylawyers’ was likely to confuse people into believing that it was operated by Sidley Austin, and there was no evidence that Mr Mannick had used it.
By registering the .com address, which was the subject of a pending domain name dispute at the World Intellectual Property Organisation, Mr Mannick had shown that he “clearly intended to usurp” the firm’s rights on a worldwide basis.
In his defence, Mr Mannick claimed Sidley Austin “does not operate in the UK” – in fact it has had a London office since 1974 – and that Sidley was a “very popular family name in the USA, Canada, UK and South Africa”.
Mr Mannick said he did not “deal in the buying and selling of domain names”, but merely advised “friends and work colleagues on the benefits of doing business on the internet, and assists them in purchasing domain names to establish their online presence”.
He said he registered the UK site on behalf of a friend whose surname was Sidley, and who was nearing the completion of his training as a lawyer and wanted to set up his own law firm.
However, there was no evidence either of the conversations with his friend or that his surname was in fact Sidley.
The independent expert adjudicating the dispute, Ravi Mohindra, said Mr Mannick’s actions were “wholly inconsistent” with someone who had registered the domain name to help his friend and had “no knowledge” of the law firm at the time of registration, as he had claimed.
If he registered it on behalf of someone setting up a law firm, it was “inconceivable” that he would not have researched it first; given “the renown” of the law firm, he would “certainly have come across” it.
Mr Mohindra said the $3,000 Mr Mannick sought was “well in excess of any out of pocket expenses” that would have been incurred in registering the names.
The adjudicator said he was satisfied that the domain name was bought to benefit from the “reputation and goodwill” of Sidley Austin, and, on the balance of probabilities, Mr Mannick had taken “unfair advantage” of the law firm’s rights in a way that amounted to ‘abusive registration’.
The addition of the word ‘lawyers’ to the domain name “did nothing” to distinguish it from the names used by the law firm.
He rejected Mr Mannick’s request for a finding of reverse domain name hijacking.