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.
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.
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’ 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.
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.