HMV has failed to wrestle control of the domain name topdog.com from its current owner, the receiver of a failed software firm. Despite having UK and EU trade marks in the phrase 'top dog', the music retailer's demand for the name has been rejected.
A software company in the US registered the web address in 1995 but has since gone into receivership. Topdog Software Inc (TSI) had registered the domain, but it is now controlled by Brandyn Briley, the receiver appointed by a Georgia court to administer the assets of the now-defunct company.
TSI had developed a search engine submitter program which it called TopDog, but the company was dissolved in 2001 and a receiver appointed to dispose of its assets. They included the domain name topdog.com.
HMV took its case before the arbitration and mediation centre of the World Intellectual Property Centre (WIPO). It argued that Briley has no rights in the disputed name and that because it is identical to the trade marks held by HMV it should pass to it. Because the partnership behind TSI had dissolved, argued HMV, and because the domain did not lead to an actual website, the receiver has no legitimate rights or interests in the domain.
HMV also argued that the receiver owns the domain name purely for the purpose of selling it at a profit, and that its registration is therefore in bad faith.
Briley argued that she had legitimate interests in the domain as the fiduciary for TSI. She said that selling the domain name at the best price is part of her duty to maximise the value of the assets of the company in receivership, and that this is one of the roles of a receiver.
WIPO panellist Sir Ian Barker agreed with Briley. "At the time of requisition, the Respondent had a right and legitimate interest in the disputed domain name," wrote Barker in his judgment. "She was acting as the agent of a Court at the Court’s direction in procuring registration of the name to herself and preserving the asset for whomsoever was held by the Court to be the owner."
Barker ruled that Briley did not act in bad faith. "It is difficult to see that a Court-appointed officer, purporting to act in accordance with the duties imposed on her by a Court to realize a corporation’s assets, could be acting in bad faith, with the primary intention of disrupting the business of the Complainants in any of the ways set out in the [WIPO] Policy," he wrote.
The WIPO panellist also rejected the idea that Briley should be stopped from selling the domain at the highest price. "Nor does the Panel see anything sinister in the Respondent selling assets of TSI where she is be to paid her professional fees for the receivership out of the proceeds," wrote Barker. "It is a fairly basic tenet of insolvency law that the reasonable costs of a liquidation are a first charge on the assets of the defunct corporation."
Barker ruled against HMV.