A Cheltenham-themed online betting comparison and racing news company in the UK has been ordered to hand over its domain name by the official web watchdog Nominet following a complaint by Jockey Club Racecourses Ltd, the organisers of the famous Cheltenham Festival racing.
The complainant said that the Cheltenham brand had been used in the web address of the offending company despite the fact that it had no official links to the prestigious annual horse race festival, and that this amounted to abusive and unfair usage.
Dorset-based Moneta Communications Ltd., the owners of the online betting comparison and racing news website, said that the brand at issue had been registered by it a decade ago, and that it had only been using the words to describe the festival and had at no time intended to take advantage of the Jockey Club’s rights.
After investigating the complaint, Nominet concluded that the use of the Cheltenham brand, albeit with a hyphen, took unfair advantage of the Jockey Club’s rights in the words “Cheltenham Festival”.
It found that Moneta had known all along that the Jockey Club, which organises the Cheltenham Festival, had accrued rights in the words chosen for the address.
Any ordinary person visiting the website would think it was linked with the Festival itself, the investigator determined, adding that whilst Moneta could not be totally prevented from referring to the Festival, it was “not necessary” to use those exact words in the website address.
“The respondent acknowledges that the mark belongs to the complainant and yet is using that mark, albeit with a hyphen, as its own domain name to offer services related to horse racing,” the investigator concluded.
“It is entirely foreseeable and likely that ordinary consumers would think that a web site with a domain name identical to the complainant’s mark, save for a hyphen, was connected to the complainant in some way.
“It is taking unfair advantage of the complainant’s rights and likely to cause the complainant detriment.”