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Apple Goes After Owner; "I'm Not Going to Be Bullied"

TMO Reports - Apple Goes After 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, 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 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.

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