Introduction to .uk domain disputes by Hagit Ben-Artzi
The .uk registry is the world's fourth largest (after the .com, .org and .de
registries). It is administered by Nominet, a not-for-profit company based in
Oxford, England. Nominet acts not just as the .uk registry, but also as the .uk
dispute resolution service provider.
Nominet does not use the UDRP for dispute resolution, but has instead created a
distinctive system inspired by the UDRP. The substantive rules governing .uk
disputes are set out in Nominet's dispute resolution policy document (referred
to below simply as the "Policy") and its dispute resolution procedure document.
Procedural rules
The Nominet dispute resolution procedure is a close relative of the UDRP
procedure. However, there are some important differences.
There is a free mediation service built in to the Nominet procedure. The
mediation process involves a neutral third party who tries to bring the
complainant and respondent to agreement through "shuttle diplomacy". If the
parties can resolve their dispute before the mediation period comes to a close,
Nominet waives its fee.
Another distinctive feature of the Nominet procedure is the possibility of
appealing an expert's decision (in Nominet proceedings, panellists are called
"experts"). By contrast there is no appeal - other than to a court of law -
from a decision under the UDRP or the EURid rules.
A single expert always decides "first instance cases". Should either party
appeal the first instance decision, a three member panel will be appointed to
decide the appeal. At the time of writing, there have only ever been six
appeals.
The Nominet fee is always paid by the complainant. At present, that fee stands
at 750 plus VAT. There is also a fee of 3000 plus VAT payable by a person
invoking the appeal procedure.
The remedies available are cancellation or transfer. Unlike in UK litigation,
there are no provisions for the unsuccessful party to pay the successful
party's costs.
Substantive rules
Basic rule is that: "A Respondent must submit to proceedings under the Dispute
Resolution Service if a Complainant asserts to us, according to the Procedure,
that: (i) The Complainant has Rights in respect of a name or mark which is
identical or similar to the Domain Name; and (ii) The Domain Name, in the hands
of the Respondent, is an Abusive Registration." (Paragraph 2(a) of the Policy.)
"Rights" are treated in a similar way to rights under the UDRP: the test is not
a difficult one to meet.
The idea of an "Abusive Registration" maps imperfectly on to the concepts of
legitimate interest and bad faith under the UDRP.
Rights in a name or mark...
Paragraph 1 of the Nominet Policy provides that: "'Rights' includes, but is not
limited to, rights enforceable under English law. However, a Complainant will
be unable to rely on rights in a name or term which is wholly descriptive of
the Complainant's business."
In practice these rights are often rights arising out of registered UK or
Community trade marks.
However, the rights can also be rights in the tort of passing off. This is a
complex subject, but most experts will be prepare to accept that a complainant
has unregistered trade mark rights which could give rise to an action in
passing off where the complainant can show substantial use of a mark or name as
a trade mark in the UK. It is probably fair to say that the standard of proof
required by Nominet experts of these unregistered rights is significantly lower
than that required by the English courts in a passing off action - although in
passing off cases the evidence is usually being used to prove a different
point.
Rights can also mean contractual rights - e.g. where one person has contracted
with another to transfer the domain, but then refuses to do so.
...which is identical or similar to the domain name
Because most Nominet experts have at least some expertise of trade mark law,
the concepts of identity and similarity are heavily conditioned by the
comparable concepts in trade mark law.
As regards identity, the domain name extensions are ignored, so that the trade
mark MERCEDES is identical to the domain name mercedes.co.uk. Similar formal
differences (e.g. the use of hyphens in a domain name in place of spaces)
should not upset a finding of identity.
Similarity is more difficult. In European trade mark law there is a concept
which may be called "confusing similarity", and it is this concept which
experts are accustomed to apply when comparing one mark to another. The
question is: would the public be confused by the use of the marks or names, or
associate one with the other. Judging by the detail of experts' decisions, a
similar question is often asked in .uk domain name dispute arbitrations.
Abusive registration
"'Abusive Registration' means a Domain Name which either: (i) was registered or
otherwise acquired in a manner which, at the time when the registration or
acquisition took place, took unfair advantage of or was unfairly detrimental to
the Complainant's Rights; OR (ii) has been used in a manner which took unfair
advantage of or was unfairly detrimental to the Complainant's Rights."
(Paragraph 1 of the Nominet Policy)
Note that the abuse can take place either at the time of
registration/acquisition or subsequently. In either case, the key ideas are
those of taking "unfair advantage of" or being "unfairly detrimental to" the
complainant's rights.
Proving an allegation of abusive registration
A non-exhaustive list of factors which may be evidence that the domain name is
an abusive registration is set out in paragraph 3(a) of the Nominet Policy:
"(i) Circumstances indicating that the Respondent has registered or otherwise
acquired the Domain Name primarily: (A) for the purposes of selling, renting or
otherwise transferring the Domain Name to the Complainant or to a competitor of
the Complainant, for valuable consideration in excess of the Respondent's
documented out-of-pocket costs directly associated with acquiring or using the
Domain Name; (B) as a blocking registration against a name or mark in which the
Complainant has Rights; or (C) for the purpose of unfairly disrupting the
business of the Complainant;
(ii) Circumstances indicating that the Respondent is using the Domain Name in a
way which has confused people or businesses into believing that the Domain Name
is registered to, operated or authorised by, or otherwise connected with the
Complainant;
(iii) The Complainant can demonstrate that the Respondent is engaged in a
pattern of registrations where the Respondent is the registrant of domain names
(under .uk or otherwise) which correspond to well known names or trade marks in
which the Respondent has no apparent rights, and the Domain Name is part of
that pattern;
(iv) It is independently verified that the Respondent has given false contact
details to us; or
(v) The domain name was registered as a result of a relationship between the
Complainant and the Respondent, and the Complainant: (A) has been using the
domain name registration exclusively; and (B) paid for the registration and/or
renewal of the domain name registration."
Because of paragraph 3(c)(i) of the Policy, it is unwise to offer to sell the
domain to a trade mark owner where there is a dispute or the potential for a
dispute. Another effect of that paragraph is that it is easier for a
complainant to prove his or her case where a domain name is used commercially.
For this purpose, commercial use includes serving pay-per-click advertising or
carrying affiliate links.
Paragraph 3(c)(v) is designed to deal with the all-too-common situation where
an employee of a company (often in the IT department) or service provider to a
company (often a web developer) registers domain name reflecting the company's
trade marks, and then refuses to transfer the domain name when a dispute
arises.
Disproving an allegation of abusive registration
A non-exhaustive list of factors which may be evidence that the domain name is
not an abusive registration is set out in paragraph 4(a) of the Policy:
"(i) Before being aware of the Complainant's cause for complaint (not
necessarily the 'complaint' under the DRS), the Respondent has: (A) used or
made demonstrable preparations to use the Domain Name or a Domain Name which is
similar to the Domain Name in connection with a genuine offering of goods or
services; (B) been commonly known by the name or legitimately connected with a
mark which is identical or similar to the Domain Name; (C) made legitimate
non-commercial or fair use of the Domain Name; or
(ii) The Domain Name is generic or descriptive and the Respondent is making
fair use of it;
(iii) In relation to paragraph 3(a)(v) [registration as a result of a
relationship between the parties]; that the Registrant's holding of the Domain
Name is consistent with an express term of a written agreement entered into by
the Parties; or
(iv) In relation to paragraphs 3(a)(iii) and/or 3(c) [pattern of abusive
conduct]; that the Domain Name is not part of a wider pattern or series of
registrations because the Domain Name is of a significantly different type or
character to the other domain names registered by the Respondent."
Paragraph 4(a)(ii) is arguably one of the most important in the Policy.
Controversially, some experts have read this rather narrowly, such that domain
names which are 100% descriptive of the business in which they are being used
are being transferred to complainants in circumstances where it would be
extremely difficult if not impossible to put together a credible case in the
High Court.
Conclusions
The Nominet procedure is inexpensive and efficient, and the quality of expert
decision-making tends to be reasonable. However, the procedure is by no means
perfect: it is a blunt instrument and from time to time decisions are issued
which seem unfair, at least inasmuch as they represent a significant extension
of trade mark owners' rights over the position in trade mark law. Moreover, the
very fact that there is a distinct set of rules governing .uk domains (and a
distinct dispute resolute procedure) means that, where a dispute involves other
domain name extensions as well, there is extra expense.
About the Author
Hagit Ben-Artzi owns Sequitur IPS, a legal consultancy providing specialist
advice and representation in domain name disputes and domain name arbitration
proceedings. Please visit the Sequitur IPS domain
name disputes website.
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