TMO Reports - Apple Goes After iTunes.co.uk Owner; "I'm Not Going to Be Bullied"
by , 3:00 PM EST, December 6th, 2004
Apple Computer has accused a small British company of illegally possessing the domain iTunes.co.uk, and is taking on its owner, demanding it be given control of the Web address. Its owner plans to vigorously fight the iPod maker, saying he registered the domain a month before Apple's application for a British trademark was made public.
Benjamin Cohen, the CEO of CyberBritain Holdings Ltd., told The Mac Observer Monday he was first contacted by Apple's legal counsel, Chicago-based Baker & McKenzie LLP, on November 5, demanding the domain name be turned over to Apple.
"They wanted me to simply give it up," he told TMO. "They basically said it was theirs, I had no right to it, and that they would take further legal action to get it. I told them I wouldn't give it up."
Unable to persuade Mr. Cohen, Apple filed for a domain authority proceeding on November 30 with Nominet, the British equivalent of InterNIC in the U.S. which handles domain name registrations, saying it owns the right to the name.
CyberBritain Holdings Ltd. must officially respond in writing to Apple's filing by December 30. Apple will then have a chance to respond to Mr. Cohen's side of the story. A hearing that will ultimately decide who gets the domain will happen sometime "early next year," Mr. Cohen said, probably in February. "It's quite a lengthy process," he said.
Mr. Cohen said Apple threatened to take other legal action against him, in addition to trying to get control of the domain.
"Initially they were talking about getting a court injunction against us to get control of the domain," Mr. Cohen commented. "They gave up on that idea, but frankly we would have preferred if they had tried to do that because we're actually more confident that we would win in a court in a domain resolution."
Mr. Cohen contends he has a strong case against Apple based simply on the fact he bought the domain before Apple filed for a trademark. He said he registered the iTunes.co.uk domain name on November 7, 2000 as one of a series of generic domain names to forward to various parts of what was then CyberBritain’s network of Web sites.
Unknown to CyberBritain because the application was only known to the British patent office, Apple applied for a trademark for the name iTunes on October 27. It was not until December 6 that the application was published in the Trade Marks Journal, some four weeks after Mr. Cohen's company began using the domain. Apple was later granted a restricted trademark on March 23, 2001, which didn't include the use of the phrase 'iTunes' for music products.
On April 16, 2003, Apple applied for a trademark for the name 'iTunes Music Store', but has yet to be granted rights. It wasn't until June of this year that Apple launched its British iTunes online music service.
Apple inaugurated its iTunes music service in the U.S. on April 28, 2003.
Mr. Cohen's lawyer, who happens to be his father and is working for no fee, has been in negotiations with Apple's counsel, but has made it clear he will not be giving up the domain without a fight.
"What this comes down to is that they think we're cybersquatting on their legal name," Mr. Cohen told TMO. "The facts prove there is no way we could have known they would trademark the name before we bought it. We legally beat them to the name. It's just that simple."
Mr. Cohen believes he will win in the domain review because he can prove his company has been commonly known by the domain name and has made fair use of it. If he does not win, he plans to ask for a judicial review in the British high court. He said there is no exact precedence in British legal history to guarantee victory.
"To be honest, we don't feel they have a case at all," he said.
Mr. Cohen said initially Apple offered a cash settlement to him to turn over the domain, but that he turned down the offer.
"Had we accepted the financial offer, it could have been seen as an intent by us to profit from their trademark, which would then mean they could prosecute us. But we didn't accept their offer."
Mr. Cohen said negotiations with Apple bar him from saying how much the company offered him to buy the domain, "but what they offered versus how much they have spent on legal fees to fight this doesn't even come close," he said.
Mr. Cohen believes that so far throughout the battle for his domain Apple has tried to bully and scare him, something others might have given in to.
"The general gist is that 'We're Apple and you're not.' They're acting as a big brand owner and saying we don't have any rights. We do have rights and I'm not going to bullied into giving them something they don't own."
An Apple spokesperson was not immediately available for comment. Historically, Apple has refused comment on pending legal matters.
Not knowing UK trademark law, but based on US law and Apple's application predating the web registration, I can say what Mr. Cohen does with his site (give it a visit!) would provide enough of dillution and confusion in the marketplace to cause some kind injunctive recourse.
Remind me, when did iTunes launch? Cause his site seems to be a blatant misuse.
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Engine Joe wrote: Not knowing UK trademark law, but based on US law and Apple's application predating the web registration, I can say what Mr. Cohen does with his site (give it a visit!) would provide enough of dillution and confusion in the marketplace to cause some kind injunctive recourse.
[quote="Lanthar"]Remind me, when did iTunes launch? Cause his site seems to be a blatant misuse.
Itunes launched in the U.S. April 28, 2003. But when iTunes first launched has nothing to do with this issue. Remember...we're dealing with the law in Britain, not the U.S.
launched 1.0 - January 9, 2001 (http://en.wikipedia.org/wiki/ITunes)
so 2 months after us.
There is no price, we didn't want to sell and its not about money its the principle of the matter. However, if Apple made a serious offer we'd consider, this domain is not a core asset of the business, but it is one we legally registered and intend to keep.
QuickQuid.com makes money but not from the traffic that goes to itunes.co.uk, about 100 people have signed up to the site through the link. It forwards to that page because we have nothing else we're promoting at the moment.
Interesting that the site forwards to another site highlighting an iPod mini. Seems to be confusing to me...and I don't claim to be the smartest brain in the world, either.
Two things that seem to bolster Apple's argument:
1: the iPod mini listed above.
2: the professed millionaire at the end of the business justification for the David vs Goliath drama, list the business as a small business.
Honestly, seems like a bunch of whining to defend his position. Oh poor me...
You probably heard rumors that Apple was going to use the iTunes name for their music software product, which Apple applied for trademark in October 2000. The usual pre-MacWorld SF rumors. That led you to register it as quickly as you could in November. So the actual release date of the software has nothing to do with it. You know it. So don't go spreading your sad story around...
As you no doubt can guess, I hope Apple wins this one.
Is there anyway someone can check the AppleInsider/ThinkSecret/MacOSRumors/or their predecessors, etc to check when they first "rumored" the iTunes name?
Point #2 doesn't really bolster Apples argument. It is however interesting that the millionaire lists his business as a small business. The point being that he further attempts to make it sound that a big Company (Apple) is pulling something on his business.
The all reaks of what happens in car accidents when nothing of incidence happens. The victim fakes a hurt neck or back (your choice) and then decides to sue.
Makes you wonder who is getting taken advantage of here.
iTunes music store may have been launched on April 28, 2003 ... but iTunes, as a product, was releases on January 9, 2001. (http://en.wikipedia.org/wiki/ITunes)
He has a point ... it will be interesting to see how this one settles. But I expect he will add more to his "millions".
I looked at your site, and I'm not quite sure what product or service you provide that necesitates the iTunes domain. Furthermore, your site seems to be built around products including the iPod and iTunes which could cause confusion and dillution of Apple's brand.
However, you were there first.
I would suggest you make a deal with Apple, allowing for a link that would lead people to the correct iTMS, which would be a compromise.
Good luck and don't be too stubborn to accept something from Apple.
I looked at Ben's site and it's just a pointer to other sites (mostly quickquid.com). It's just like when you visit a site that hasn't been registered to anyone and it just has a bunch of links somewhat related to the name but doesn't do anything but link. Sounds like squatter to me. I hope Apple doesn't pay him a cent.
CloseViewName:randompro42Posts: 226Joined: 25 Sep 2003 Mon Dec 06, 2004 9:10 pmSubject: common tactic
I just hope that Mr. Cohen will have the brains to settle this before this sets foot in court.
Everyone remember what happened with mikerowesoft.com? he settled out of court, got some cash, a new domain, and free advertisement from M$-- in other words, he played M$ for a bunch of fools
and only because he was this teenage kid trying to do something on the internet who happened to have the name Mike Rowe
The difference is that Mike Rowe offered a product, as far as i have seen, itunes.co.uk offers a place to get a plethora of spam emails. There is no hope other than Apple assuming control of itunes.co.uk
a quick question
with the internet, anyone can see when a patent is filed for on the same day it is filed, so who is to say that this wasnt registered because they lurked the patent office site. so, here is the question
Apple filed for patent on 27/10/2000. itunes.co.uk was registered on 7/11/2000. apple recieved the patent in january 2001. does the date a patent is filed mean anything?
Guest wrote: itunes.co.uk launched as an mp3 search engine in November 2000, iTunes launched in the USA in 2003 and in the UK in 2004. We were there first
Ben Cohen
cyberbritain
something i just noticed... if this was released as an mp3 search engine (and still retains those qualities) is the site not illegal unless there is a payment function? if there is a payment function, when was it implemented? does the site even act as an mp3 search engine? every link points to quickquid.com, so why maintain that site?
there are so many questions, but they will all be answered for in some form of court... sorry, but itunes.co.uk will be apple's and Mr. Cohen will be SOL
The Cohens try to make it sound like Apple tried to pay them off because Apple thought they would lose. But it's more likely, Apple was just trying to be reasonable and offered to pay the Cohens the amount they spent to register the site for this year. No more than $100 - not even enough to buy the iPod that they're giving away on the site!!! That's why they couldn't accept.
… The Register takes another lunge at Aple …
I wonder how the “whiz kid” made his millions in the first place … other scams of this kind ?
"I realised the stupidity of what was going on, there was no concentration on key revenue streams, it was all about land grab and not about money. I decided that the only way there would be a future was to start to cut back."
Company by company, dotcom by dotcom, Cohen made his already small team redundant. He closed down skipmusic.com- a loss making music and mp3 portal, dotfamilies.com - a family safe search product and ceased development on a revision website, an mp3 software business, a cross communal website and numerous others.
On the offer, it was a lot more than $100 but we don't need to sell. I've not had the slightest interest in Apple before so its unlikely that we would have heard about itunes before we registered the name. Secondly, I was a dot.com millionaire but I'm not a millionaire now, it was all on paper. Thirdly, the ipod promotion was to prove a point and is not always displayed on the webpage. Fourthly, no the mp3 search engine was not illegal, see http://www.findarticles.com/p/articles/mi_m0NEW/is_2000_Sept_18/ai_65282520
Seems like everytime something happens the press and some others are quick to make Apple out to be bad. I don't think this is the case.
I'm sure the company may need prodding on some issues like the iBook replacement, if I remember correctly. I think that the company tries to do well and has integrity. Though other issues like this, and the current British complaint that Apple is over charging for iTunes appear to be so silly (perhaps it's the record companies licenses that keep iTunes from blanketing the EU, huh?)
In looking over the posts, I can't say that many here are in favor of this millionaire and his claim. It's sad, I've known of others like him in my brief life.
1) there was no patent search on HM Patent Office Site then
2) The information was confidential to HM (Her Majesty's) staff at the time
3) The US trademark: 9th January 2001 USA Trademark applied for ITUNES by Apple Computer Inc for: 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
Much as I find it galling that Benjamin Cohen has snapped up the itunes.co.uk domain -- it would be nice of him to let Apple have it -- I do think some of the comments on this board are a little one-eyed. As some have said, it is essentially a legal issue.
Perhaps Apple would have been better off treating him nicely from the start, although that might not have made a difference. Benjamin's dad seems to have his head screwed on the right way.
Still, it is a pity for Apple users (who as customers have a stake in seeing Apple succeed) that something like this has come up to throw a spanner in the works in the UK.
CloseViewName:Guest Tue Dec 07, 2004 5:32 amSubject: What?
I honestly can't see how people posting in this column can possibly defend the actions of Apple in this matter. Essentially what you are looking at is a big bullying corporation attempting to force another, smaller business out of action.
This is the sort of behaviour we have all come to expect from large corporations, but you shouldn't be defending it just because this corporation happens to be Apple. That's just outrageous!
You should be writing to Apple to say you disagree with their approach, not having a go at this bloke who bought the domain fair and square. When you all back Apple up when they do things like this, you are effectively giving them license to behave like MS thugs.
Remember, Apple can always register another domain name without any fuss, such as itunesmusic.co.uk or itunesstore.co.uk or itunesmusicstore.co.uk or ipoditunes.co.uk or itunesmusic.info or itunesstore.info....etc...etc...
umm im afraid you are wrong. all you americans are defending apple because they are apple. also we are dealing in good old BRITAIN here, not USA. the courts will (hopefully) not jump to apples side.
he registered the domain first, its his, LEGALLY, and there is absolutely nothing apple can do. its a farce that its even going to court. APPLE HAS NO RIGHT HERE.
the content of the site does not matter one bit. he could have anything on it and its still his. he is breaking no british laws at all.
CloseViewName:jecrawfordPosts: 17Joined: 13 Oct 2004 Tue Dec 07, 2004 6:20 amSubject:
How do you that Apple were not unreasonable? Strikes me that the Cohens were just as likely to have been unreasonable. No doubt the court case will settle it. Till then I think it is wiser not to jump to conclusions about either party.
John Crawford
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Guest wrote: I honestly can't see how people posting in this column can possibly defend the actions of Apple in this matter. Essentially what you are looking at is a big bullying corporation attempting to force another, smaller business out of action.
This is the sort of behaviour we have all come to expect from large corporations, but you shouldn't be defending it just because this corporation happens to be Apple. That's just outrageous!
You should be writing to Apple to say you disagree with their approach, not having a go at this bloke who bought the domain fair and square. When you all back Apple up when they do things like this, you are effectively giving them license to behave like MS thugs.
Remember, Apple can always register another domain name without any fuss, such as itunesmusic.co.uk or itunesstore.co.uk or itunesmusicstore.co.uk or ipoditunes.co.uk or itunesmusic.info or itunesstore.info....etc...etc...
Ben gave an interview to BBC Radio 5 Live this morning. He sounded like a guy who would sell his grandmother if the price was right, (although I guess she's probably not a core asset of the family). Made my skin crawl to be honest.
If Apply wins then you might as well just give up your rights to everything right now! Why should anyone in the world automatically give in to a larg company? I for one will never shop from Apply again, they may not care because they have a lot of money to throw around intimidating people, but if that is how they want to waste their money, then so be it. I only shop/buy stock from socially responsible companies and of course now I have to add Apple to my list of companies that use greed as their primary goal. What a bunch of losers.
I don't really care about this cyberbritain guy, but no one should be bullied for/by big money.
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Guest wrote: "Ben",
You probably heard rumors that Apple was going to use the iTunes name for their music software product, which Apple applied for trademark in October 2000. The usual pre-MacWorld SF rumors. That led you to register it as quickly as you could in November. So the actual release date of the software has nothing to do with it. You know it. So don't go spreading your sad story around...
As you no doubt can guess, I hope Apple wins this one.
Is there anyway someone can check the AppleInsider/ThinkSecret/MacOSRumors/or their predecessors, etc to check when they first "rumored" the iTunes name?
I would never sell my grandma, either of them, I love them.
I'm sorry if I made your skin crawl but I didn't intend to.
On the rumours, can you just accept that its simply a case of honest concurent use, I've never used a mac, let alone owned one and I certainly wouldn't have visited a forum on macs unless this all happened.
It's really simple, we wanted something with the word tunes in it and picked itunes.co.uk as it was available. Remember there's another website using i-tunes.co.uk, that was registered before ours, and it sells music.
"How do you that Apple were not unreasonable? Strikes me that the Cohens were just as likely to have been unreasonable. No doubt the court case will settle it. Till then I think it is wiser not to jump to conclusions about either party."
Taking someone to court because they legally own something you want and tried to buy is unreasonable in my book.
"Listen, we'd like to buy this domain of you for our iTunes store. We are prepared to offer you a million zillion pounds for it,", say Apple.
"No thanks," says CyberBritain.
"Well then, I'll guess we'll have to discuss this... IN COURT!"
It's a trade mark lawyer's term of art from the "old act", (Trade Marks Act 1938), which survives only in a very narrow form, (in section 7), in the "new act", (Trade Marks Act 1994).
In neither case, however, is it a defence to trade mark infringement - it is simply an argument used by an applicant to overcome a Patent Office objection to registration of a trade mark.
CloseViewName:Guest Tue Dec 07, 2004 9:40 amSubject:
Quote
Guest wrote: "How do you that Apple were not unreasonable? Strikes me that the Cohens were just as likely to have been unreasonable. No doubt the court case will settle it. Till then I think it is wiser not to jump to conclusions about either party."
Taking someone to court because they legally own something you want and tried to buy is unreasonable in my book.
"Listen, we'd like to buy this domain of you for our iTunes store. We are prepared to offer you a million zillion pounds for it,", say Apple.
"No thanks," says CyberBritain.
"Well then, I'll guess we'll have to discuss this... IN COURT!"
Sound reasonable to you?
I agree a lot. Apple have no rights here at all, he owns the site and wants to hold on to it. Surely they cannot BULLY him to get it off him?
"Apple was later granted a restricted trademark on March 23, 2001."
"Apple inaugurated its iTunes music service in the U.S. on April 28, 2003."
So Apple registered a trademark and did nothing with it for years, preventing other organisations and individuals from selling goods with a name which makes absolute sense for a music product online. If anyone came along in the mean time and wanted to actually do something with the name then in the name of free trade they ought to have been allowed. It's the same as Microsoft, IBM and others taking out patents for ideas they don't use, just to stop anyone else getting a competetive advantage on them. The first to market should be the owners of the name.
Cohen has done nothing wrong and should not have the name taken from him. It's a similar situation to the katie.com farce, where an innocent domain owner had her property ruined by a publishing giant that refused to back down.
In any case, if Apple had squatted on all the available itunes, i-tunes etc domains as well as the trademark, which they could easily afford to do, then they would have avoided this. Not that I'm in favour of that of course.
Anyone who believes in free trade should stand up to any attempt to prevent, or extend the framework for prevention of, new entrants to a market. Even if you like their shiny white products.
Guest wrote: umm im afraid you are wrong. all you americans are defending apple because they are apple. also we are dealing in good old BRITAIN here, not USA. the courts will (hopefully) not jump to apples side.
he registered the domain first, its his, LEGALLY, and there is absolutely nothing apple can do. its a farce that its even going to court. APPLE HAS NO RIGHT HERE.
the content of the site does not matter one bit. he could have anything on it and its still his. he is breaking no british laws at all.
so sod off apple...
I'm sorry but you're the one that doesn't seem to grasp the laws regarding this. How Ben will lose the case is two-fold:
• He is illegally infringing on an Apple trademark. Apple owns the use of the term itunes in relation to music with the UK. Ben can use this with Apples permission or not at all.
• He is not using the domain for a ligitimate purpose. Notwithstanding the above point Ben isn't actually doing anything useful with his domain other than to sell spam to visitors expecting iTunes. If he had a legitimate use for the domain (outside of Apples field of business) he may be entitled to keep it as he does legally own it. As he does not, and is only profiting from Apples success, he will not be allowed to continue it's operation.
The law in the UK regarding the internet, domain names and squatters are very similar - remember they've not been here too long.
CloseViewName:Guest Tue Dec 07, 2004 10:34 amSubject: wrong
apple don't have a trademark for itunes for music products, only for audio data files. They have applied for "iTunes Music Store" though although that would apply to a site caled itunesmusicstore.co.uk or similar.
If itunes.co.uk was used by cyberbritain before apple's trademark was granted as it was, then there is no need for apple's permission to use the name itunes.co.uk
What is on the site is irrelevant, i could register blahblahblah.co.uk and not put anything on it, or put a load of rubbish on it or anything else that is legal, it doesn't give the right for anyone else to have that domain. There are thousands which have never been used for anything, i.e. itunes.com itself was blank with a "register.com" coming soon message on it for two years.
CloseViewName:Guest Tue Dec 07, 2004 10:43 amSubject:
Quote
Guest wrote: [I'm sorry but you're the one that doesn't seem to grasp the laws regarding this. How Ben will lose the case is two-fold:
• He is illegally infringing on an Apple trademark. Apple owns the use of the term itunes in relation to music with the UK. Ben can use this with Apples permission or not at all.
• He is not using the domain for a ligitimate purpose. Notwithstanding the above point Ben isn't actually doing anything useful with his domain other than to sell spam to visitors expecting iTunes. If he had a legitimate use for the domain (outside of Apples field of business) he may be entitled to keep it as he does legally own it. As he does not, and is only profiting from Apples success, he will not be allowed to continue it's operation.
The law in the UK regarding the internet, domain names and squatters are very similar - remember they've not been here too long.
Jay,
from England
Hello, Jay, I am the person u quoted. Unfortunately u dont seem to see that apple has no business HARASSING Ben for the domain.
Heres a (very bad) metaphor:
Say you have a piece of blank paper (like an unbought domain), and you write on it Ford. Now the word ford has other meanings and can apply to other things than cars, rght? So does that give FORD the right to come along and DEMAND that you give t
