Domain Name Disputes and the Nominet Dispute Resolution Procedure

Domain Names are a protected resource on the Internet that traders adopt in order to associate with goods and services. It is therefore necessary to allow parties who may dispute to the rights to a Domain Name a fair and independent method of determining who owns the rights to Domain Names.

The Nominet Dispute Resolution Service is a method of resolving these disputes between parties to protect the rightful owners of Domain Names in a cost effective manner and to prevent rogue parties gaining from wrongfully acquiring rights in Domain Names to which they have no right.

Abusive and Bad Faith Registrations

A claim for an abusive registration of a Domain Name can be made to Nominet in line with their Policy and Procedure. A complainant may assert that they have rights in respect to a domain name or trade mark that is identical or similar to a domain name; and the domain name in the hands of the party complained is an abusive registration.

An abusive or bad faith registration may occur when a Domain Name has been acquired, which at the time the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to a third party who has rights in respect of a Domain Name. This also includes “Reverse Domain Name Hijacking' that is use of the Nominet Policy in bad faith in an attempt to deprive a registered domain-name holder of a domain name.

Alternatively an abusive registration may take place if a domain name has been used in a manner which has taken unfair advantage of or was unfairly detrimental to a third party’s rights to a domain name.

Dispute Resolution Service Policy; Dispute Resolution Service Procedure

These Policies and Procedures provide guidance as to what may be taken into account in deciding whether a domain name registration is an Abusive Registration. This guidance is in the form of a non-exhaustive list of factors which includes:

• Circumstances that indicate that a Domain Name has been registered or acquired primarily for the purposes of selling, renting or otherwise transferring the Domain Name to a party or a competitor of a party, for valuable consideration in excess of the direct costs of the party acquiring the Domain Name through its own registration.
• A blocking registration against a Domain Name against which a party has rights or use of the Domain Name to unfairly disrupt the business of a party also shows evidence of an abusive registration.
• A third party using a Domain Name in a way that has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with a party.
• A party that can demonstrate that a third party is engaged in a pattern of registrations which correspond to well known Domain Names or Trade Marks in which the third party has no rights and the Domain Name itself is part of the pattern.
• It can be independently verified that a third party has given false contact details to Nominet.
• Where a Domain Name has been registered as a result of a relationship between two parties and one party has been using the Domain Name exclusively; and paid for the registration and/or renewal of the Domain Name.

The presumption of an Abusive Registration occurs where a party has been found to have registered Domain Names that have been determined to be Abusive Registrations in three or more Dispute Resolution cases in the two years before the current complaint is filed. The third party may rebut this presumption by proving that the Domain Name registration is not an abusive registration.

• A person defending a claim for an Abusive Registration (the “Respondent”) may produce evidence in response that the Domain Name registration is not abusive. Again this is a non-exhaustive list of factors:
• Before being aware of a complaint a party has 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;
• The Domain Name is generic or descriptive and the party to the complaint is making fair use of it;
• A party holding the Domain Name is consistent with an express term of a written agreement entered into between the parties involved.
• 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 party to the complaint.

Length of Dispute Resolution Procedure

Once a complaint is submitted it is verified by Nominet as complying with the Policy and Procedure and is forwarded to the party to the complaint within three days of receipt. Proceedings under the Dispute Resolution Service commence upon the deemed date of receipt by the Respondent. The parties to the proceedings are notified of this date.

The Respondent has to respond to Nominet within fifteen days of the commencement of proceedings. The response is then forwarded to the Complainant within three days of receipt.

The Complainant can respond to the Respondent’s response within five days of receipt. Within three days of the expiry of the deadline or the submission of a response by the Complainant Informal Mediation is conducted. If no acceptable resolution is found within ten days and upon submission of the relevant fees by the complainant an expert will be appointed within five days.

Failure by the Respondent to submit an initial response to the complaint results in an expert being directly appointed upon receipt of the relevant fees. Upon the appointment of an expert unless exceptional circumstances apply the expert’s decision upon the complaint will be made within ten days. The decision of the expert is then communicated within three days to the parties.

If the decision by the expert concludes a Domain Name registration should be cancelled, suspended, transferred or otherwise amended, the decision will be implemented within ten days following the notification of the parties. Each of the parties within this ten-day period has the right to appeal.

An appeal process would commence within three days of receipt of the statement of intention to appeal and deposit or appeal notice and full fee. A panel of three experts is appointed following the receipt of the appeal notice who have thirty days from the last appointed expert to make an appeal decision. This time period can be extended by up to ten days by agreement with Nominet.

Appeal decisions are final within the Dispute Resolution Service and any further action must be via the courts. In total this process would take up to 50 days to complete and 90 days on appeal if the initial decision is appealed.

Length of Court Proceedings

An alternative to the dispute resolution procedure of Nominet for Abusive Domain Name registrations is to seek action through the courts. A claim through the courts is likely be a passing off claim. These claims typically usually take 12 to 18 months.

Difference between passing off and the Nominet Dispute Resolution Policy

The law of passing off concerns itself with misrepresentations made by one trader that damages the goodwill of another trader. Misrepresentation, damage and goodwill are the essential elements that must be proved for a successful claim in passing off.

Misrepresentation in passing off occurs where a person or a business adopts for their own goods or business the get-up, name, mark or sign that is deceptively similar to material that a claimant is selling.

Damage must also occur or be likely to occur as a result of the misrepresentation to be actionable. It must therefore be calculated to cause damage to the claimant’s goodwill established in the business calculated in this context as a special meaning. “Calculated” does not require any subjective intention. As such, deliberate conduct is not required to make-out the claim as conduct is assessed objectively. Deliberate conduct may however be taken into account in assessment for damages. Damage tends to fall under two main heads, that the claimant loses business to the business making the misrepresentation if the two businesses are in competition with one another or that that the claimant will suffer as a result of the competing business selling goods or services of inferior quality and thereby damaging the goodwill built up in the business. The products as a result are perceived to be of a poorer quality in the market.

Applying this to the context of Domain Names, simply registering a domain name that is available in the market will not render a business free of claims from passing off. Even if there are no registrations in the Trade Marks Register for a business name the use of a Domain Name, which is similar to that of another established business, may leave a business liable to a passing off claim should there be evidence of misrepresentation by the party registering the Domain Name and damage and goodwill in the established business.

The Nominet Dispute Resolution Policy acts to protect the rights of people who own Domain Names and the rights of those people or businesses under English Law who assert there has been a bad faith registration of the Domain Name. It cannot however protect the rights in a name or term that is wholly descriptive of the business making the complaint.

It is sometimes the name alone of a business that can carry the goodwill. As such a legitimate registration of a Domain Name for actual business use by a business that has registered a Domain Name first may not result in a successful claim under the Nominet Dispute Resolution Policy. It may well be deemed as an attempt at Reverse Domain Name Hijacking in which a party has attempted to use the Policy and Procedure citing an Abusive Registration to gain a Domain Name that is held legitimately by an innocent party. Three failed attempts at claiming a Domain Name with Nominet results in a ban on any further claims for a 2-year period on any Domain Name with Nominet.

Conclusion

Under certain circumstances it may be more appropriate to pursue a claim in passing off in order to establish that a businesses is attempting to piggyback on the reputation of another business rather than take action through Nominet.