The Nominet Dispute Resolution Service (DRS) is a quick and low cost route that brand owners can use to claim that .uk domain names should be transferred to them. However, it can be a frustrating forum for brand owners, who have often seemed to be one step behind domain squatters. In contrast to a number of cases where the brand owner has failed, the decision in emirates.co.uk shows how a successful claim can be brought.
In order to bring a successful Nominet complaint, a complainant must show that:
- it has rights in respect of a name or mark which is identical or similar to the domain name; and
- in the hands of the respondent, the domain name is an abusive registration.
A registration is abusive either if, when it was registered or subsequently, it took or takes unfair advantage of or was unfairly detrimental to the complainant’s rights.
Brand owners rarely have difficulty in showing that they have rights in respect of a name. However, showing that a registration is abusive can be more difficult, particularly as there are no disclosure obligations or opportunities for cross examination in DRS proceedings. It can be particularly difficult for brand owners whose brand could have an alternative meaning to show that a domain registration is abusive.
In verbatim.co.uk, the Appeal Panel said that the respondent’s knowledge of the complainant’s brand was a prerequisite for abuse. Michael Toth, the respondent in that case, said that he was ignorant of the complainant’s brand until he heard from their lawyers, and the complaint failed. The bar was raised even higher in maestro.co.uk, where the Appeal Panel said that ‘where a domain name is a sinnle ordinary English word, the meaning of which has not been displaced by an overwhelming secondary meaning, the evidence of abuse will have to be very persuasive, if it is to be held an abusive registration under the DRS policy.’
Delay in bringing a claim could also prejudice a complaint. Last summer, Coca-Cola brought a complaint that 5alive.co.uk was an abusive registration. However, the domain had been held for six years and the Expert said that ‘where there has been such a long delay between the registration of the domain name and the initiation of the complaint, there has to be evidence beyond mere assertion to justify the claim that this is an abusive registration’.
The Appeal Panel’s decision in emirates.co.uk provides some helpful comments on these issues. The respondent in the case was again Michael Toth, who owns a large portfolio of domains. In 2009 the Czech Arbitration Court held that he had registered and used emirates.eu in bad faith. Nevertheless, the Expert held that ’emirates’ was a generic word meaning the plural of ’emirate’, and also a colloquial name for the United Arab Emirates, and accordingly the registration was not abusive.
The Appeal Board overturned this decision, observing:
- the web site at www.emirates.co.uk was not a genuine ‘country resource related guide’ – most of the content was the same as the content for www.china.co.uk, with ‘Emirates’ replaced by ‘China’- accordingly, the web site was not a genuine offering of goods or services – which is a defence under the DRS;
- as a result of the complainant’s ‘extensive successful trading’, the word ‘Emirates’ had acquired a secondary meaning syonymous with the complainant, and so the word Emirates would be taken to be a reference to the complainant;
- given the complainant’s reputation (it had won over 170 awards between 1988 and 2002, and had a turnover of almost £150m in 2002), it was on balance very likely that the respondent was aware of the complainant in 2002 – it was a natural inference from this that the respondent ‘very probably designed his use of the domain name in light of that awareness’;
- initial interest confusion could be a possible basis for finding of an abusive registration; and
- the generally held view of Nominet Experts is that delay alone is not a ground on which a complaint may be denied and, in this case, the delay had not prejudiced the respondent.
This decision is encouraging for brand owners. The Appeal Board took a pragmatic approach, considered the actual use of the domain, and inferred what must have been the case – that the respondent designed his web site in light of his awareness of the complainant. The case shows how important it is to file a full and thorough complaint. In 5alive.co.uk, the Expert had been dismissive about the complainant’s evidence for reputation – which was just a page from its own web site and a Wikipedia article. In contrast, in emirates.co.uk the complainant filed extensive evidence about its reputation which impressed the Panel and, unlike Coca-Cola, Emirates got the result they were looking for.
Declan Cushley and Giles Parsons, Intellectual Property Team, Browne Jacobson LLP
