ADR: Nominet’s DRS
Nominet has been providing a dispute resolution service to resolve .uk domain name disputes since 2001. Nominet’s DRS Policy (version 4) applies to all disputes filed on or after 1 October 2016. There were 671 DRS complaints in 2018. It should be noted that domain name disputes involving domain name registrations under new gTLDs administered by Nominet, such as .wales and .cymru, are subject to the Uniform Domain Name Dispute Resolution Policy (UDRP) or the Uniform Rapid Suspension System (URS); thus Nominet’s DRS Policy does not apply to the new gTLDs administered by Nominet.
Pursuant to paragraph 2 of the DRS Policy, Nominet will order the transfer or cancellation of a .uk domain name provided the complainant demonstrates that he, she or it has rights in respect of a name or mark that is identical or similar to the domain name; and the domain name, in the hands of the respondent, is an ‘abusive registration’.
Rights, as defined in paragraph 1 of the DRS Policy, mean rights enforceable under English law or otherwise, and may include rights in descriptive terms that have acquired a ‘secondary meaning’. Thus, rights are broadly defined to include not only trademark rights, whether registered or unregistered, but other rights such as contractual rights or personality rights. Furthermore, there are no geographical or jurisdictional restrictions with regard to ‘rights’ (paragraph 1.5 of the Experts’ Overview). However, the mere registration of a company name at Companies House does not in and of itself give rise to any ‘rights’ within the meaning of the DRS Policy (paragraph 1.7 of the Experts’ Overview). Neither will a trademark application in and of itself, without evidence of unregistered rights, give rise to rights for the purpose of the DRS Policy.
This first requirement is therefore essentially a low threshold test designed to determine whether a complainant has standing to bring a complaint. However, if the right is disputed or the surrounding circumstances are particularly complex, the complaint may be rejected for ‘not being appropriate for adjudication under the Policy’ (paragraph 1.6 Experts’ Overview and DRS 04632 (ireland.co.uk)).
As regards the identity or similarity test, the wording of the DRS Policy is considerably broader than that of the UDRP (which refers to ‘confusing similarity’). Like the UDRP, if the complainant’s trademark is a word trademark (as opposed to a figurative trademark), the identity or similarity test is usually straightforward. For the purpose of this test, hyphens or the addition of generic or descriptive terms are generally insufficient to distinguish a trademark from a domain name (paragraph 2.3 of the Experts’ Overview). It is also a well-accepted practice that the suffix, such as .co.uk, is irrelevant for the purpose of this test.
Pursuant to paragraph 1 of the DRS Policy, ‘abusive registration’ means a domain name that either:
- was registered or otherwise acquired in a manner that, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant’s rights; or
- has been used in a manner that has taken unfair advantage of or has been unfairly detrimental to the complainant’s rights.
Thus the DRS Policy, unlike the UDRP, does not require that both the registration and use of the domain name be unfair; but that their registration or use be unfair. Therefore, the DRS Policy would cover situations in which it is clear that the registration was ‘fair’ but the subsequent use of the domain name becomes ‘unfair’.
The DRS Policy provides a list of examples of what may constitute ‘abusive registration’. Paragraph 5.1.1 sets out examples that involve the registrant’s intention for registering the domain name: the respondent registered (or otherwise acquired) the domain name primarily:
- for the purposes of selling or renting it to the complainant (or a competitor), for valuable consideration in excess of the respondent’s documented out-of-pocket costs;
- as a blocking registration against a name or mark in which the complainant has rights; or
- for the purpose of unfairly disrupting the business of the complainant.
The following circumstances are also indicative of ‘abuse’:
- the respondent is using or threatening to use the domain name to cause confusion among internet users so as to mislead them into believing that the domain name is connected with the complainant (paragraph 5.1.2 of the DRS Policy; see also Nominet DRS7539 (edusafe.co.uk) and DRS9108 (michelinstar.co.uk) for more on threatened abuse);
- the respondent is engaged in a pattern of infringing domain name registrations of well-known names or trademarks (whether under .uk or otherwise) (paragraph 5.1.3 of the DRS Policy and paragraph 3.5 of the Experts’ Overview); or
- the respondent has provided false contact details to Nominet (paragraph 5.1.4 of the DRS Policy).
Awareness of a complainant’s rights is generally indicative of abusive registration of a domain name under the DRS Policy (DRS 4331 (verbatim.co.uk)).
A distinctive feature of the DRS Policy is that it includes a provision uncommon in other ADRs that addresses abusive registration of domain names as a result of a relationship, such as that between an employer and an employee, a common source of domain name conflict (paragraph 5.1.5 of the DRS Policy). In such cases, the complainant must satisfy two requirements: it must have been using the domain name registration exclusively; and paid for the registration or renewal of the domain name registration.
The DRS Policy also expressly provides that there is a rebuttable presumption of abusive registration where a respondent is found to have made an abusive registration in three or more DRS cases within two years before the filing of the complaint at issue (paragraph 5.3 of the DRS Policy).
Finally, the DRS Policy expressly provides that failure on the respondent’s part to use the domain name (for the purposes of email or a website) is not in itself evidence of abusive registration. However, in certain circumstances, such as when a brand is well-known and there is no apparent legitimate reason for the domain name registration, non-use of a domain name may be indicative of a ‘threatened abuse hanging over the head of the complainant’ (see paragraph 1.3 of the Experts’ Overview and DRS0658 (chivasbrothers.co.uk)).
The DRS Policy (paragraph 8), also sets out a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration, including:
- before being aware of the complainant’s cause for complaint, the respondent has:
- used, or made demonstrable preparations to use, the domain name in connection with a genuine offering of goods or services;
- been commonly known by the name or legitimately connected with a mark that is identical or similar to the domain name; or
- made legitimate non-commercial or fair use of the domain name;
- the domain name is generic or descriptive and the respondent is making fair use of it;
- if the domain name was registered as a result of the relationship between the complainant and the respondent, the respondent’s holding of the domain is consistent with an express term of a written agreement between the parties; or
- 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.
In addition, the following may be considered legitimate uses of a domain name:
- fair use (including sites operated solely in tribute to or in criticism of a person or business);
- trading in domain names for profit, and holding a large portfolio of domain names; or
- sale of traffic (for example, pointing domain names to parking pages and earning click-per-view revenue), depending on the nature of the domain name; the nature of the advertising links on any parking page associated with the domain name; and that the use of the domain name is ultimately the respondent’s responsibility.
The Nominet DRS procedure involves an informal mediation phase following receipt of the parties’ submissions (paragraph 10 of the DRS Policy). If the parties are unable to reach an agreement and if the respondent submits a response, Nominet will proceed to appoint an expert for a full decision, upon payment of the applicable fees by the complainant. However, if the complainant fails to pay such fees, the respondent may opt to pay the fees him or herself to obtain a decision, which is rare (see, for example, DRS 11872 (a1furniture.co.uk)). Otherwise, the complaint will be deemed withdrawn.
If a respondent fails to submit a response, the complainant may apply for a summary decision (paragraph 12 of the DRS Policy). In the case of a summary decision, the expert is not required to write a full decision but only to certify whether the complainant has rights and whether there has been an abusive registration.
Both full decisions and summary decisions are decided by a single expert (contrary to appeal cases within the DRS that are decided by a three-member panel).
In the United Kingdom, domain name disputes are mainly decided by courts on the basis of trademark infringement, the common law tort of passing off, or both.
Registered trademark rights are protected against infringement under section 10 of the Trade Marks Act 1994 (implementing European Directive No. 89/104/EEC), which allows the owner of a registered trademark to prevent a third party from using in the course of trade:
- a sign that is identical to the trademark in connection with identical goods or services for which the mark is registered;
- a sign that is identical to the trademark in connection with goods or services similar to those for which the trademark is registered; or a sign that is similar to the trademark in connection with identical or similar goods or services for which the trademark is registered and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark; or
- a sign that is identical or similar to the trademark in connection with goods or services that are not similar to those for which the trademark is registered, where the trademark has a reputation in the United Kingdom and the use of the sign, being without cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.
Furthermore, unregistered trademark rights are protected under the common law tort of passing off. To be able to succeed in an action for passing off, a claimant must demonstrate the following three requirements:
- goodwill or reputation attached to the supplied goods or services associated with the trademark;
- a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the claimant; and
- damage, or a likelihood thereof, resulting from said misrepresentation.
The main difficulty in resolving domain name disputes based on trademark infringement stems from the ‘use in the course of trade’ requirement. However, the English courts have found that the mere registration of a domain name can constitute trademark infringement and passing off, in spite of a defendant’s non-use of the domain name. In this regard, the landmark domain name decision is British Telecommunications plc v One in a Million Ltd , which involved the registration of several domain names identically reproducing well-known trademarks, including britishtelecom.com, virgin.org and marksandspencer.com, which were not actively pointing but were registered by the registrants with the intention to sell them to the trademark owners. This is the leading case on trademark infringement and passing off in the context of domain names in the UK, and stated that the registration of a unique and distinctive name that is a registered trademark in itself amounts to trademark infringement and passing off. Despite its being nearly 20 years old, One in a Million continues to be applied regularly in the English courts. See, for example, Future Publishing Ltd v Edge Interactive Media Inc , Ross v Playboy Enterprises International Inc  EWHC 1379 and the recent case of Azumi Ltd v Zuma’s Choice Pet Products Ltd  EWHC 609.
Before commencing a legal action for trademark infringement or passing off, the parties involved must attempt to settle their dispute outside the courtroom.
Trademark infringement or passing-off actions are commenced in the Chancery Division of the High Court or in the Intellectual Property Enterprise Court (IPEC, formerly the Patents County Court) with the issue of a claim form that sets out the claim and relief sought. The claim form is then served on the defendant and the particulars of the claim must be contained in or served with the claim form or subsequently be served on the defendant within 14 days after service of the claim form (Rule 7.4 Civil Procedure Rules). The defendant may then serve a defence, including any counterclaims, and the claimant then has the opportunity to serve a reply to the defendant’s defence, as well as (if applicable) a defence to the counterclaims. Following this there is the disclosure process, the exchange of witness statements and, if a party relies on an expert witness, expert evidence. The case then will proceed to trial.
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